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This is the sixth post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, and Vietnam (in no particular order).  Our first five posts examining divisional practice in Brazil, Mexico, China, India and Argentina and can be found here:  Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, and Divisional Practice – Argentina.

Time Periods for filing a Divisional Application

In Canada, a divisional application must be filed during pendency of the original application (parent application).   Typically, a divisional will be filed during prosecution of the original application, or at the latest, when paying the issue fee.  The ultimate deadline to file a divisional is the day before issuance.   Additionally, if an original application is refused, a divisional application can be filed before 6 months from the mailing of the refusal or, if there is an appeal, 2 months from when the appeal process ends.  Divisional applications can be filed for any reason (often referred to as “voluntary” divisional applications) or in response to a lack of unity rejection.  Cascading divisionals (meaning a divisional application filed from another divisional application) are permitted.

Requirements for Filing a Divisional Application

When filing a divisional application, a copy of the specification, abstract and drawings from the parent application must be filed.  A set of claims (either the original claims from the parent application or a new claim set) must also be included.  Often an applicant refiles the original claims for continuity of subject matter.   The cost of filing a divisional is comparable to the cost of a new application.  The content of the divisional filing papers are similar to that of the parent application.  The disbursement for a divisional is often significant because of the requirement to pay all the annuity fees accrued since the filing date of the parent application. The term of patent for a divisional application is twenty years from the filing date of the very first parent application. 

Request for Examination

A divisional application gets the same filing date as its parent application.  The deadline for filing request for examination a divisional application will vary depending on the filing date of the parent application from which the divisional application originates.  There is variance because Canada is in a transition period following new Patent Rules that came into effect October 30, 2019 (“transition date”).   Specifically, if a divisional application has a parent filing date before the transition date, then examination must be requested and the examination fee paid within the later of five years from the original filing date and six months from the presentation date of the divisional application.  However, if a divisional application has a parent (i.e. original) filing date on or after the transition date, examination must be requested and the examination fee paid within the later of four years from the original filing date and three months from the presentation date of the divisional application.

Claims of a Divisional Application

A divisional application may be filed with the claims as originally filed in the parent or PCT application.  However, the claims of a divisional application filed with the same claims of a parent or PCT application will need to be amended at some point during prosecution to a non-elected group, if there was a unity objection in the parent.  Otherwise, they will need to be amended in a manner to ensure that the divisional application claims are patentably distinct (meaning novel and non-obvious) from the parent claims. 

Double Patenting

In Canada, much like the United States (U.S.), there is a prohibition against double patenting. Divisional applications following a unity objection are treated differently than voluntary divisionals.  

Divisional Following Unity Objection

If the claims being pursued in a divisional application were previously cancelled in response to a lack of unity rejection in a parent application, then the claims of the divisional application are immune from a double patenting attack based on the parent application.

When prosecuting a divisional application after a unity objection, care should be taken to avoid amendments that might cause the claims to depart significantly from what the Examiner originally considered to be a separate invention group.  Therefore, to ensure validity of both parent and the divisional patents, it is advisable to refer back to the original unity requirement to divide a set of claims so that new issues of double patenting are not created inadvertently.

Voluntary Divisional

Voluntary divisionals are where double patenting concerns arise.  Specifically, in Whirlpool Corp v. Camco In., 2000 SCC 67, the Supreme Court of Canada confirmed that an inventor is only entitled to one patent of each invention.  A patentee who claims successive patents for a single invention by way of obvious variations unlawfully extends the scope of the patent term, such that the second patent is invalid on the basis of double patenting.  Note that a double patenting objection during prosecution of a divisional is not fatal if the applicant can amend claims and/or argue to traverse. 

In Canada, the double patenting prohibition comprises 2 branches:

  1. A “same invention” or “coterminousness” branch; and  
  2. An “obviousness” branch.

The “same invention” or “coterminousness” branch is similar to statutory double patenting in the U.S., where claims of a pending application and an issued patent cannot have the same exact (identical) scope.  An applicant needs to amend pending divisional claims to overcome this objection. 

The “obviousness” branch is similar to “obviousness-type” double patenting in the U.S., and the applicant will have to amend pending claims or argue with the Patent Office. Under this branch, the claims of a pending application (such as a divisional application) must be patentably distinct (meaning novel and nonobvious) over the claims of an issued patent or co-pending application.  In the U.S., in most instances, an obviousness-type double patenting rejection can be obviated by the filing of a terminal disclaimer.  However, Canadian law does not provide for a terminal disclaimer.

Therefore, an Applicant filing a voluntary divisional in Canada must be very careful to make sure that the claims of its divisional application: (1) do not claim the same invention as the parent application; and (2) are patentably distinct over the claims of the parent application.

Similar to the U.S., an issued patent can be invalidated for double patenting in Canada.  Once a patent has issued, it may still be possible in Canada to cure a deficiency by disclaimer or reissuance, if the double patenting arose due to mistake. 

As a matter of practice, the best option in Canada is to file all claims of interest in the parent application, and allow the Examiner to make an assessment of whether there is more than one invention so that a formal unity objection (i.e., requirement for division) is on record before a divisional application is filed.  In effect, voluntarily filed divisional applications should be avoided in Canada where possible.

This post was written by Lisa Mueller and Noel Courage of Bereskin & Parr, LLP.

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