Tag: divisional application

Filing a Divisional Application in Europe – Part 15

Lisa L. Mueller March 2, 2021

This is the fifteenth 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 fourteen posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan, Malaysia, Singapore, Russia, Saudi Arabia and Vietnam and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, Divisional Practice – Pakistan, Divisional Practice – Malaysia, Divisional Practice – Singapore, Divisional Practice in Russia, Divisional Practice in Saudi Arabia, Divisional Practice in Vietnam and Divisional Practice – United States.

Divisional applications in Europe

For European patent applications, a divisional application must be filed while a parent application is pending. A parent application is no longer pending when it is granted, definitively refused or definitively withdrawn. In other words, a patent application is considered pending:,

Until the day before the date of publication of the mention of grant of the patent in the European Patent Bulletin;
Until the last day of the period for filing an appeal (even if an appeal is not subsequently filed), when the Examining Division has refused the patent application; and if an appeal is filed, during the subsequent appeal proceedings;
On the day the European Patent Office (EPO) receives a written request to withdraw a patent application; or
Until the last day of a time limit; where non-observance of the time limit results in the application being “deemed withdrawn” with “a loss of rights”; such as, for example, due to: a failure to (a) pay a fee in due time; (b) file a translation of the claims; or (c) respond to a communication from the Examining Division with respect to an application’s deficiencies. However, if the Applicant takes steps to remedy the loss of rights (for example by filing a request for further processing and paying the relevant fees) then the application will be deemed to have been pending throughout the period. It is important to note that if the parent application is a Europe-PCT (Euro-PCT) application, it must enter the European regional phase either before or together with the divisional application in order to be deemed pending.

Requirements for Filing a Divisional Application

According to Rule 40 of the European Patent Code (EPC), when filing a divisional application, the following must be supplied to the EPO:

A written statement that an European patent is being sought;
Information identifying the Applicant or allowing the Applicant to be contacted; and
A description or reference to a previously filed application (A reference to a previously filed application must state the filing date and the number of the application and the Office in which it was filed. Such reference must indicate that it replaces the description and any drawings).

When an application contains a reference to a previously filed application, a certified copy of the previously filed application must be filed within 2 months of the filing of a divisional application, unless the reference application was originally filed with the EPO. If the previously filed application is not in an official language of the EPO (namely, in English, French or German), a translation into one of the official languages will be required within 2 months of the filing of the divisional application.

The filing and search fee for a divisional application must be paid within one month after filing. The designation fee must be paid within 6 months of the date on which the European Patent Bulletin mentions the publication of the European search report for the divisional application.

Claims of a Divisional Application

A divisional application may be filed with or without any claims. If a divisional application is filed without any claims, the EPO will set a 2-month period for the Applicant to provide a set of claims. Alternatively, a divisional application may be filed with the claims as originally filed in the parent or Euro-PCT application. However, the claims of a divisional application filed with the same claims of a parent or Euro-PCT application will need to be amended at some point during prosecution to ensure that neither the parent or divisional application claim the exact same subject matter from one another.

Double Patenting

The EPC does not explicitly contain any specific provisions prohibiting double patenting (namely, the case of co-pending European patent applications having the same filing date, filed by the same Applicant, and claiming the same subject matter). However, the Guidelines for Examination in the EPO (Guidelines) in Section G-IV-5.4 state that “it is an accepted principle in most patent systems that two patents cannot be granted to the same application for one invention”. In fact, the Enlarged Board of Appeal (Board) in decisions G 1/05 and G 1/06 accepted a prohibition on double patenting. The reasoning the Board gave is that an Applicant does not have a “legitimate” interest in proceedings leading to the grant of a second patent for the same subject matter if the Applicant already possesses a granted patent for that same subject matter. According to the Board, it is permissible to allow an Applicant to proceed with 2 applications having the same description provided that the claims are distinct in scope and directed to different inventions.

In view thereof, substantial overlap between claims has been permitted by the EPO. For example, if claims to a narrow genus are obtained in a first application (such as a parent application), the EPO is likely to allow claims to a broader genus that encompasses the species in a divisional application. Specifically, the Guidelines in Section G-IV-5.4 state that:

“…in the rare case in which there are two or more European applications from the same applicant definitively designating the same State or States (by confirming the designation through payment of the relevant designation fee) and the claims of those applications have the same filing or priority date and relate to the same invention, the applicant should be told that he must either amend one or more of the applications in such a manner that the subject matter of the claims of the applications is not identical, or choose which one of those applications he wishes to proceed to grant. If he does not do so, once one of the applications is granted, the other(s) will be refused under Art. 97(2) in conjunction with Art. 125. If the claims of those applications are merely partially overlapping, no objection should be raised (see T 877/06). Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist” (emphasis added).

Therefore, practically speaking, an Applicant is unlikely to receive a double patenting objection by an Examiner in a divisional application provided that the Applicant can show that the claims in the divisional application do not contain the identical scope of the parent application.

Examination of Divisional Applications

A divisional application is treated as a separate application and is accorded a separate application number, requires separate fees, requires a separate request for examination, will be prosecuted separately from the parent application, and will result in an independent patent from the parent application. The fees for a divisional application are the same as for any parent application. The term of patent for a divisional application is twenty years from the filing date of the very first parent application.

Other Important Information Regarding Divisional Applications

Unlike other jurisdictions where divisional applications can only be filed when a lack of unity objection is raised by the relevant Office, European divisional applications can be filed at any time (namely, before receipt of the Search Report or issuance of any communication from the Examining Division).

Furthermore, unlike other jurisdictions where divisional applications can only be filed with claims directed to an invention other than the first invention identified by the relevant Office, European divisional applications can be filed (subject to the above considerations on double patenting) with claims directed to any subject matter, provided that the subject matter is literally supported by both the European divisional application as originally filed and the parent application(s) as originally filed. In particular, divisional applications can be filed with claims directed to subject matter only disclosed in the description and/or drawings of the parent application even where the claims of the parent application were never directed to such subject matter.

When filing and/or subsequently amending a divisional application, care must be taken to avoid an “extension of subject matter” beyond that disclosed in both the divisional application as filed and the parent application as filed, as well as the priority application, if its priority is claimed. The Examining Division will apply the so-called ‘gold-standard’ for determining what is disclosed, i.e., only subject matter “which is directly and unambiguously derivable from the disclosure of the invention in the priority and/or parent application (excluding the abstract, but including the drawings), also taking into account any features implicit to a person skilled in the art in what is expressly mentioned (see G 2/98)”. Applicants are recommended to include all the subject matter disclosed in the parent application in the divisional application, for example, by including the claims of the parent application (in the form of clauses) in the description of the divisional application.

Additionally, Applicants must take care not to definitively delete any subject matter from a parent application (for example due to a unity objection), since this subject matter cannot become part of its divisional application.

This post was written by Lisa Mueller and Verena Simpson, Lars Pallisgaard Olsen and Annette Sorensen of Guardian IP.

United States

Filing a Divisional Application in the United States – Part 14

Lisa L. Mueller February 24, 2021

This is the fourteenth 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 thirteen posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan, Malaysia, Singapore, Russia, Saudi Arabia and Vietnam and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, Divisional Practice – Pakistan, Divisional Practice – Malaysia, Divisional Practice – Singapore, Divisional Practice in Russia, Divisional Practice in Saudi Arabia and Divisional Practice in Vietnam.

Divisional Practice in the United States

Continuing Applications

In the U.S., a pending application may serve as the basis for a continuing application. Three types of continuing applications exist under U.S. practice, namely divisional, continuation, and continuation-in-part applications. A continuing application may itself serve as the basis for another continuing application.

Time Period for Filing a Continuing Application

One or more divisional, continuation, and/or continuation-in-part applications may be filed any time prior to grant of a U.S. patent application.

Requirements for Filing a Continuing Application

When filing a continuing application, the following documents must be submitted:

A copy of the specification, drawings, and abstract;
A set of claims to be pursued;
An oath or declaration (for continuation-in-part applications) or a copy of a previously submitted oath or declaration (for divisional and continuation applications); and
Basic filing, search, and examination fees.

Additional fees will be required for more than three independent claims, more than 20 total claims, and for each additional 50 sheets that exceeds 100 sheets.

Claims of a Continuing Application

Divisional Application: U.S. law provides that if an application contains claims directed to two or more independent and distinct inventions, an Applicant may be required to elect a single invention for examination on the merits. Each non-elected invention may be pursued in what is referred to as a “divisional” application(s). Because restriction was required in the parent (original) application, the parent application cannot serve as the basis of a double patenting rejection as long as the claims of the divisional application are directed to a non-elected invention. In another words, in a properly filed divisional application, a double patenting rejection cannot be made.

Continuation Application: A continuation application contains the originally disclosed subject matter. A continuation application may be filed with the originally filed claims and/or new claims (provided that there is support for the claims in the specification as originally filed). The parent application (or another continuation application that claims priority back to the parent application) may serve as the basis of a double patenting rejection during examination of any continuation application.

Continuation-in-part Application: A continuation-in-part application contains the originally disclosed subject matter, plus additional, new subject matter. Accordingly, the claims of a continuation-in-part application may be directed to the originally disclosed subject matter, the newly disclosed subject matter, or a combination thereof. The parent application (or a continuation application that claims priority back to the parent application) may serve as the basis of a double patenting rejection during examination of a continuation-in-part application.

Double Patenting

Under U.S. practice, the doctrine of double patenting prevents an Applicant from extending patent exclusivity beyond the term of a patent. This doctrine assumes that the public will be free to use the claimed invention, plus modifications and variants that would have been obvious to one of ordinary skill in the art upon expiration of a patent. Double patenting may be raised when an issued patent and one or more pending applications (referred to as “non-provisional” double patenting) or two or more pending applications (referred to as “provisional” double patenting because neither application has yet issued as a patent) meet one of the following requirements: (1) have the same inventors; (2) have at least one common inventor; (3) are commonly assigned or owned; or (4) are non-commonly owned or assigned, but subject to a joint research agreement.

Generally, two types of double patenting exist in U.S. practice:

Statutory Double Patenting: Based on 35 U.S.C. § 101, refers to the fact that an Applicant may obtain only a single patent per invention. Accordingly, if the claims of an application being examined and an issued patent or pending application are directed to the same invention, a statutory double patenting rejection will be issued by the United States Patent and Trademark Office (USPTO). The phrase “same invention” means identical subject matter. The test of whether or not the same invention is being claimed twice is whether the claim in an application being examined can be infringed without literally infringing a corresponding claim in a patent or pending application. An example is provided below.

Example

Claim in a pending application undergoing examination: A compound of Formula I wherein X is chlorine.
Claim in issued patent: A compound of Formula I wherein X is chlorine.
Test: Can the claim in the examined application be infringed without literally infringing the claim in the issued patent? Answer: No. The claim in the application being examined will be rejected by the Examiner for statutory double patenting.

Non-statutory Obviousness-type Double Patenting: This type of double patenting is the result of a judicially created doctrine. Non-statutory obviousness-type double patenting intends to prevent an Applicant from extending patent exclusivity by obtaining claims in a second patent that are patentably indistinguishable (in other words, not patentably distinct) from the claims in another patent or pending application. Accordingly, if the claimed invention in an application that is being examined (such as in a continuation or continuation-in-part application) is an obvious variant or modification of a claimed invention in an issued patent or pending application, a non-statutory obviousness-type double patenting rejection will be issued by the USPTO. Essentially, a non-statutory obviousness-type double patenting rejection is considered to be “analogous” to a failure to meet the obviousness requirement of 35 U.S.C. Section 103 except the patent or pending application underlining the double patenting rejection does not have to be prior art.

The key inquiry in a non-statutory obviousness-type double patenting rejection is the differences between the inventions defined by the conflicting claims. The specification can only be used to construe the meaning of the claims (namely, as a dictionary to learn the meaning of the term in the claims).

Overcoming a Double Patenting Rejection

Statutory Double Patenting: A statutory double patenting rejection may be overcome by: (a) amending the claims in the application being examined so as not to be coextensive in scope with the claims of the issued patent or pending application that form the basis of the rejection; (b) arguing the rejection; (c) canceling the conflicting claims in the application being examined; (d) if a “provisional” statutory double patenting rejection is the only rejection remaining in both applications, asking the Examiner to withdraw the rejection in the application with the earlier filing date and permitting that application to issue as a patent (if both applications were filed on the same date, Applicant will need to elect which of the two applications is to be allowed); or (e) abandoning the application in which the rejection is raised. A terminal disclaimer cannot be used to overcome a statutory double patenting rejection.
Non-statutory Obviousness-type Double Patenting: A non-statutory obviousness-type double patenting rejection may be overcome by: (a) amending the claims in the application being examined to be patentably distinct over the claims of the issued patent or pending application that form the basis of the rejection; (b) arguing the rejection; (c) canceling the claims at issue in the pending application being examined; (d) if a “provisional” non-statutory obviousness-type double patenting rejection is the only rejection remaining in both applications, asking the Examiner to withdraw the rejection in the application with the earlier filing date and permitting that application to issue as a patent (if both applications were filed on the same date, Applicant will need to elect which of the two applications is to be allowed); (e) if the rejection is a “provisional” rejection, abandoning one of the pending applications; or (f) filing a terminal disclaimer.

Terminal Disclaimers

A terminal disclaimer is a legal document that ensures that the term of a patent granted on an examined application will not extend past the expiration of the term of the conflicting patent or a patent granted on a conflicting application. A terminal disclaimer is effective only if there is common ownership between the conflicting claims at issue. If there is no common ownership, a terminal disclaimer cannot be filed. Additionally, it is important to remember when conducting due diligence that a patent granted in which a terminal disclaimer is filed is enforceable only as long as the patent issuing and the prior patent that formed the basis of the non-statutory obviousness-type double patenting rejection are commonly owned.

A terminal disclaimer must: (1) specify the portion of the term of the patent being disclaimed; (2) state the present extent of Applicant’s or Assignee’s ownership interest in the patent to be granted; and (3) indicate that the terminal disclaimer fee is enclosed (Presently, $170.00 per terminal disclaimer filed for a large, small or micro entity). The terminal disclaimer may be signed by the Applicant or an attorney or agent of record.

A terminal disclaimer operates with respect to all claims in a patent. A terminal disclaimer is only effective with respect to the application identified in the disclaimer, unless an Applicant specifically recites that the disclaimer applies to one or more continuation applications.

A certificate of correction cannot be used to remove a terminal disclaimer mistakenly filed during prosecution or which is no longer believed to be necessary. However, an Applicant can file a petition to withdraw a terminal disclaimer during prosecution before an application issues if grounds are provided explaining why the terminal disclaimer(s) is no longer believed to be necessary. A reissue proceeding cannot be used to withdraw a terminal disclaimer that is in effect at the time a patent issues.

This post was written by Lisa Mueller.

Vietnam

Filing a Divisional Application in Vietnam – Part 13

Lisa L. Mueller January 29, 2021

This is the thirteenth 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 twelve posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan, Malaysia, Singapore, Russia and Saudi Arabia and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, Divisional Practice – Pakistan, Divisional Practice – Malaysia, Divisional Practice – Singapore, Divisional Practice in Russia and Divisional Practice in Saudi Arabia.

Divisional Practice in Vietnam

In Vietnam, divisional practice is fairly flexible. Specifically, one or more divisional applications can be filed: (1) in response to a lack of unity rejection; and/or (2) at any time for any reason (e.g., voluntary divisionals are permitted). The specification of a divisional application must not go beyond the original specification of the parent application. In other words, no new matter can be added in a divisional application.

Time Period for Filing a Divisional Application

A divisional application can be filed any time during the pendency of the parent application, namely, before the Intellectual Property Office of Vietnam (IP Vietnam) issues a final decision regarding the grant or refusal of the parent application. In practice, a divisional application should be filed no later than at the time of paying the grant fees of the parent application. Vietnam’s Intellectual Property Law (IP Law) does not indicate whether a divisional application can be filed off of a pending divisional application once the parent application has issued. Currently, IP Vietnam is not rejecting divisional applications filed off of a divisional application.

Requirements for Filing a Divisional Application

According to Vietnam IP Law, the requirements for filing a divisional application are as follows:

Submission of a copy of the specification (including the abstract), claims and drawings of the divisional application as well as an entry form indicating the name, address and nationality of each inventor;
The divisional application cannot include any subject matter not originally disclosed in the parent application; and
The parent application and the divisional application cannot claim the same (e.g., identical) subject matter.

The priority and filing dates of each divisional application will be identical to the priority and filing date of the (original) parent application.

Claims of a Divisional Application

A divisional application may be filed with the claims as originally filed in the parent application or PCT application. However, the claims of a divisional application filed with the same claims as a parent or PCT application must be amended prior to or during examination to ensure that neither the parent or divisional application claim identical subject matter. As will be discussed in more detail below, if the claims of two patent applications or a patent and a pending application have identical scope, they the application(s) will be considered to be an identical invention and rejected for double patenting.

Double Patenting

Article 90 of the Vietnam IP Law states that if more than one application has been filed for the same or “equivalent” inventions, then only one patent will be granted for the application having the earliest priority or filing date (i.e., if the application does not claim priority). Article 24 of the Guidelines for Examination of Patent Applications (Guidelines) provides a series of steps that should be performed in determining whether two sets of claims recite “the same invention”.

According to the Guidelines, the first step involves determining the scope of protection of the invention based on the terms and concepts recited in the two sets of claims (with the description and drawings being used to interpret the scope of protection). Next, the claims in the first application or patent must be compared with the claims in the second application (The claims of the first application or patent must not be compared with the specification of the second application). If the scope of protection of a claim in the first application or patent is identical to the scope of protection of a claim in the second application, then the inventions will be deemed to be “identical” inventions. If the specifications of the first application or patent and the second application are the same, but the scope of protection of the claims in each are different, then the two inventions will be deemed not to be identical. For example, if the specification of a first application or patent and a second application disclose the same product and process but the claims in the first application or patent are directed to the product and the claims of the second application are directed to the process, then the two inventions will not be deemed to be identical (e.g., there is no double patenting problem). Likewise, if the scope of protection of the claims of a first patent application or patent and a second application partially overlap, then the two inventions will also be deemed to be identical. For example, if the claims of a first application or patent recite a pH range of 1.0 to 6.0 and the claims of a second application recite a pH range of 3.0 to 5.0, then the two inventions will be considered to overlap and will be considered to be identical, since the pH range of 3.0 to 5.0 is encompassed within the broader pH range of 1.0 to 6.0.

Unfortunately, the Guidelines do not provide any information about what is meant by an “equivalent invention”. However, the issue of “equivalent inventions” often arises when the claims in a first application or patent recite a genus and the claims in a second application recite species encompassed within the scope of a claimed genus. If the genus claims are patented, then in practice, the second application claiming the species will be rejected for double patenting (as being encompassed within the scope of the patented genus). However, if the claims of the species are patented, then a second application claiming a genus would be allowable provided that the claims in the second application are amended to include a disclaimer to the species claimed in the patent. However, Applicants should be aware that the requirements for specification support of a disclaimer under Vietnam IP Law are similar those of the European Patent Office.

Examination of Divisional Applications

A divisional application is accorded the same filing date as the parent application but is treated as a new patent filing. As such, the divisional application:

Is allotted its own (new) application number;

Requires payment of its own filing fees (separate from the filing fees paid in the parent application) and all back annuities;

Requires the filing of a request for examination (separate from the filing of a request for examination in the parent application);

Is prosecuted separately from the parent application; and

Results in a patent that is independent from the parent application.

The fees for a divisional patent application are similar to those for a parent application except that the payment of fees for a priority claim are not required in a divisional application.

The term of a patent issuing off of a divisional application is twenty years from the filing date of the parent application.

This post was written by Lisa Mueller and Thanh Phuong Vu of Tilleke & Gibbins.

Filing a Divisional Application in Saudi Arabia – Part 12

Lisa L. Mueller November 27, 2020

This is the twelfth 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 eleven posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan, Malaysia, Singapore and Russia can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, Divisional Practice – Pakistan, Divisional Practice – Malaysia, Divisional Practice – Singapore and Divisional Practice in Russia.

Divisional Practice in Saudi Arabia

In Saudi Arabia, divisional practice is fairly flexible. Specifically, one or more divisional applications can be filed: (1) in response to a lack of unity rejection; and/or (2) at any time for any reason (e.g., voluntary divisionals are permitted).

Time Period for Filing a Divisional Application

A divisional application can be filed any time before a receipt of a decision to grant or reject an original (e.g., parent) application. A divisional application cannot be filed from another divisional application (e.g., no cascading divisionals are permitted).

Requirements for Filing a Divisional Application

Under Saudi Arabian patent law, the requirements for filing a divisional application are as follows:

Submission of a copy of the specification (including the abstract), claims and drawings of the divisional application as well as an entry form indicating the name and address of the Applicant and the inventor(s);
The divisional application cannot include any subject matter not disclosed in the parent and priority application(s); and
The parent application and the divisional application cannot claim identical subject matter.

The priority and filing dates of each divisional application will be identical to the priority and filing dates of the (original) parent application.

Claims of a Divisional Application

A divisional application may be filed with the claims as originally filed in the parent application or PCT application. However, the claims of a divisional application filed with the same claims as a parent or PCT application must be amended during examination to ensure that neither the parent or divisional application claim identical subject matter. In other words, there can be no overlap of claimed subject matter in the parent or the divisional applications and an Examiner will reject the claims of a divisional application in the event of such overlap. Nonetheless, the claims of the divisional application may encompass broader subject matter than a parent application (subject to examination and opinion of an Examiner).

Double Patenting

Any patent issuing from a parent and a divisional application cannot claim the identical subject matter as this would present a double patenting problem. In order to determine whether or not double patenting exists, the claims as allowed are examined to determine whether or not identical subject matter is being claimed. Specifically, claimed subject matter will be recognized as being identical if:

The independent claims in the parent and divisional application are completely (100%) identical with one another; or
One or more independent claims in the parent or divisional application recite one or more alternatives and the one or more alternatives are identical with one or more alternatives claimed in the parent or (another) divisional application.

Examination of Divisional Applications

A divisional application is accorded the same filing date as the parent application but is treated as a new patent filing. As such, the divisional application:

Is allotted its own (new) application number;
Requires payment of its own filing fees (separate from the filing fees paid in the parent application) and all back annuities;
Requires the filing of a request for examination (separate from the filing of a request for examination in the parent application);
Is prosecuted separately from the parent application; and
Results in a patent that is independent from the parent application.

The fees for a divisional patent application are the same as for any parent application. Examination fees must be paid within 18-24 months from the actual filing date of the divisional application. If the fees are not paid within a three-month notice period, the application will be considered to be withdrawn.

Pursuant to standard regulations, the Applicant or his legal representative will be notified of the publication.

The term of a patent issuing off of a divisional application is twenty years from the filing date of the parent application.

This post was written by Lisa Mueller and Namir Sioufi of Saba IP.

Russia

Filing a Divisional Application in Russia – Part 11

Lisa L. Mueller November 6, 2020

This is the eleventh 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 ten posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan, Malaysia and Singapore can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, Divisional Practice – Pakistan, Divisional Practice – Malaysia and Divisional Practice – Singapore.

Divisional Practice in Russia

In Russia, divisional practice is very flexible. Specifically, one or more divisional applications can be filed: (1) in response to a lack of unity rejection; and/or (2) at any time for any reason (e.g., voluntary divisionals are permitted).

Time Period for Filing a Divisional Application

A divisional application can be filed at any time:

Up until the date of registering a patent in a parent application. However, as this typically occurs within 2-3 weeks following payment of the grant fee, it is recommendable to file a divisional application before or at the time of paying the grant fee; or
Within 7 months from the date of receipt of a final rejection in a parent application.

Requirements for Filing a Divisional Application

According to Articles 1374 and 1375 of the Russian Civil Code Part IV (“Code”), the requirements for filing a divisional application are as follows:

Submission of a copy of the specification (including the abstract), claims and drawings of the divisional application as well as an entry form indicating the name and address of the Applicant and the inventor(s);
The divisional application cannot include any subject matter not disclosed in the parent application; and
The parent application and the divisional application cannot claim identical subject matter.

More than one divisional application can be filed from a parent application.

Additionally, in accordance with current patent practice in Russia, a divisional application can be filed from a divisional application (i.e., “cascading” divisionals are permitted). The priority and filing dates of each cascading divisional application will be identical to the priority and filing dates of the very first (original) parent application.

Claims of a Divisional Application

Double Patenting

The independent claims in the parent and divisional application are completely (100%) identical with one another; or
One or more independent claims in the parent or divisional application recite one or more alternatives and the one or more alternatives are identical with one or more alternatives claimed in the parent or (another) divisional application.

If two applications claim identical subject matter, an Examiner will likely to reject the claims for double patenting during the first stage of prosecution in both applications. In the situation where two applications claiming identical subject matter have the same priority date and are filed by the same Applicant, an Examiner will issue an Office Action setting a period of 12 months for the Applicant to decide which of the two applications should be allowed to proceed to grant (assuming there are no other rejections). If the Applicant does not respond to the Office Action, both applications will become abandoned.

If two applications claiming identical subject matter are owned by different Applicants, a patent may be issued with respect to only one of these applications provided that the Applicants agree to such an arrangement and execute an agreement to that effect. The agreement must be concluded within 12 months from issuance of an Office Action raising the issue of the identity of the subject matter being claimed in the two applications. The term for executing the agreement and submitting it to the Patent Office can be extended for an additional 10 months. In the absence of an agreement between the Applicants, both applications will be abandoned.

There are no specific regulations that address the situation where identical subject matter is claimed in an issued patent and a pending divisional application owned by different Applicants. However, the Code contains regulations that address a situation where identical subject matter is claimed in an issued patent and pending divisional application owned by the same Applicant. In this situation, no Decision of Grant will be issued for the divisional application until the time the issued patent is revoked by the Applicant (owner).

Unfortunately, Examiners do not always check to see whether or not identical subject matter is being claimed in a pending parent and divisional application or an issued patent and pending divisional application, especially if the identical subject matter is being claimed as one or more alternatives. Therefore, it is possible that multiple patents may issue to the same Applicant (or different Applicants) claiming identical subject matter. Therefore, it is important for Applicants to be diligent when prosecuting divisional applications in Russia to ensure that the claims being pursued in any divisional application are not identical to any parent or other divisional application owned by the Applicant (or others).

The issuance of two patents claiming identical subject matter can be challenged in the revocation tribunal known as the “Chamber for Patent Disputes”. A revocation action can be filed by a third party at any time during the term of the patent. We are not aware of any revocation actions that have been filed on the ground that two patents claim identical subject matter. In the absence of such case law, we cannot predict the approach the tribunal might take to resolve such an action.

Examination of Divisional Applications

A divisional application is accorded the same filing date as the first parent application but is treated as a new patent filing. As such, the divisional application:

Is allotted its own (new) application number;
Requires payment of its own filing fees (separate from the filing fees paid in the parent application);
Requires the filing of a request for examination (separate from the filing of a request for examination in the parent application);
Is prosecuted separately from the parent application; and
Results in a patent that is independent from the parent application.

The fees for a divisional patent application are the same as for any parent application. Additionally, the term of a patent issuing off of a divisional application is twenty years from the filing date of the first (original) parent application.

A divisional application is examined only when a Request for Examination (“Request”) is filed within the prescribed period (namely, thirty six months from the date of filing of the application). If a Request is not filed within time, the application will be considered withdrawn.

This post was written by Lisa Mueller and Vladislav Ugryumov from Gowlings.

Signapore

Filing a Divisional Application in Singapore – Part 10

Lisa L. Mueller September 16, 2020

This is the tenth 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 nine posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, Thailand, Pakistan and Malaysia can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, Divisional Practice -Thailand, Divisional Practice – Pakistan, and Divisional Practice – Malaysia.

Time Periods for Filing a Divisional in Singapore

In Singapore, a divisional application can be filed at any time while an application is pending (i.e., before the conditions for grant are met) or before the application has been refused, withdrawn or abandoned. The divisional application may be filed of the Applicant’s own volition or to address a lack of unity objection under Section 25(5)(d) of the Patents Act.

Requirements for filing a divisional application

When filing a divisional in Singapore, the following must be submitted:

A Request for Grant of a Patent;
A Statement of Inventorship;
Full description of the invention, claims, abstract and, if applicable, drawings; and
The official fee of SGD $160 (about $120 USD).

The Statement of Inventorship must provide the full details for each inventor (including full name, address, country of permanent residence and nationality) as well as information on how the Applicant derived its rights to the invention from each of the inventors (such as via assignment or employment).

The divisional application will be treated as having, as its date of filing, the date of filing of the earlier application.

A divisional application must not contain any additional matter extending beyond that disclosed in the original application. Added matter is a ground for revocation under Singapore law.

Double Patenting in Singapore

Double patenting is a ground for revocation in Singapore. The test for double patenting is whether the granted divisional claims are directed to “the same invention” as those of the parent patent. Careful drafting of the divisional claims is therefore required to ensure that they are not identical in scope with any of the parent claims. For example, claims that use different terminology but are otherwise identical in substance, or dependent claims where the combination of limitations or additional features results in claims having identical scope in the divisional and the parent, should be avoided.

Examination

For a divisional application filed on or after January 1, 2020, a request for substantive examination must be filed within 36 months from the filing or lodgement date of the divisional application. It is no longer possible to rely on the allowed or granted claims of a corresponding application under supplementary examination due to closure of the supplementary examination route for applications having a filing or lodgement date on or after January 1, 2020.

This post was written by Lisa Mueller and Kian Hoe Khoo of Davies Collison Cave Asia Pte. Ltd.

Filing a Divisional Application in Pakistan– Part 8

Lisa L. Mueller May 21, 2020

This is the eighth 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 seven posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, and Thailand and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, and Divisional Practice -Thailand.

Time Periods for filing a Divisional Application

Section 13(3) of the Pakistani Patents Ordinance, 2000 (2000 Ordinance) provides that “each application shall relate to one invention only”. Section 13(4) further states that “the Applicant may, before the acceptance of the application, divide it into two or more applications, provided that each divisional shall not go beyond the disclosure in the first application”. By stating that “each application shall relate to one invention only”, Section 13(3) allows an Examiner to require an Applicant who is trying to protect two (or more) inventions in a single (e.g., one) application to restrict its application to a single single invention and make the second (or more) invention(s) the subject of a divisional application (e.g., a compulsory divisional application). Alternatively, section 13(4) gives an Applicant the right to divide its first/parent application into one or more (divisional) applications if the Applicant believes that its claims cover more than one invention (e.g., a voluntary divisional application).

According to section 13(4), the time period for filing a divisional application is “any time until the first/parent application has not proceeded to acceptance”. Thus, the implication is that once a parent application has been accepted, the opportunity to file a divisional application has expired.

Absent definite period for acceptance, a divisional may be kept pending up to the maximum life of a patent

As mentioned previously, according to section 13(4), an Applicant can file a divisional application “any time before acceptance of the first/parent application”. However, section 13(4) is silent regarding when (e.g., the time period) an application must be accepted. Specifically, this section of the 2000 Ordinance does not explicitly require or imply that a divisional application must be placed in order of acceptance at the same time as a parent application. As a result, an Applicant can keep a divisional application pending in Pakistan for the term of 20 years.

Lack of unity (e.g., non-unity) is not a ground to invalidate a patent post-grant

The question of whether an application claims more than one invention is considered by an Examiner during the substantive examination stage of an application. Although section 15(4) of the 2000 Ordinance requires that the claim(s) of a complete specification relate to only a single invention, section 13(6) provides that “the fact that a patent has been granted on an application that did not comply with the requirement of unity of invention is not a ground for invalidation of the patent”. In other words, if an application containing claims to two or more inventions ultimately proceeds to grant, the resulting patent cannot be later challenged as invalid based on a lack of unity.

Additionally, section 44(1) stipulates that “[N]o amendment of specification shall be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment”. This section suggests that similar to pre-grant amendments, any post-grant amendments are subject to examination for unity/added matter. However, if after this examination, the Examiner allows the amendment or is convinced by the Patentee’s arguments and withdraws the unity objection, the allowed or approved amendments cannot be called in question after advertisement and expiry of the opposition period except on the ground of fraud. It is for this reason that the grounds of opposition and revocation (e.g., belated opposition) in the 2000 Ordinance do not include a ground based on lack of unity against the original specification.

Divisional applications containing subject matter that exceeds beyond the contents of its parent application are not allowed

The proviso to section 13(4) of the 2000 Ordinance requires that a divisional application be based on the subject matter disclosed in a parent application. This implies that the contents of a divisional application must not exceed the contents of its parent application either as originally filed or amended (e.g., such as for the purpose of correcting an obvious mistake or otherwise subsequent to the filing [Sec. 44(1)]). However, when this proviso is read in conjunction with the provision of section 23(1), it is clear that a divisional application that contains subject matter that exceeds the scope of disclosure of a (complete) specification as originally filed in the parent application, may be the subject of a pre-grant opposition or revocation (e.g., belated opposition). Therefore, although a lack of unity (e.g., non-unity) is not considered to be a ground of invalidation, either pre-grant or post-acceptance, a divisional application having a claim that is broader in scope than that disclosed in its parent application will not be allowed to proceed unless its specification is amended to exclude the new/added subject matter (section 42(5)).

Use of “cascading divisionals” to overcome lack of unity (e.g., non-unity) objections

As mentioned previously, section 13(4) of the 2000 Ordinance allows an Applicant to voluntarily divide its application into two or more divisional applications. It is important to note that each of the two or more divisional applications must originate from the very first parent application filed. However, because each divisional application is considered to constitute an independent application that is the subject of substantive examination, if a lack of unity (e.g., non-unity) is found to exist in a divisional application, the filing of a subsequent divisional (e.g., a divisional off of a divisional), is permitted. Thereupon, an Applicant may have a series of divisional applications (e.g., “cascading divisionals”) on its immediate or second parent application.

Right to file further divisionals is prohibited once the first parent application is accepted

According to section 13(4), the right to file two or more divisional applications is permitted up until the acceptance of the parent application. Thus, once the parent application has been accepted, the filing of subsequent divisional applications is no longer permitted. For example, assume a specification discloses four inventions and the Applicant has decided to pursue three inventions in a single divisional application before acceptance of the parent application. Once the parent application is accepted, the Applicant may not be able to file a further divisional application. Therefore, the filing of any divisional applications from a parent application or any divisional application filed from the parent (e.g., a cascading divisional), must be filed before the acceptance of the first parent application. Failure to file any such divisionals within this time period may result in abandonment/loss of any unclaimed inventions.

The existence of “technical inter-relationships” among various groups of inventions may avoid the need to file a divisional application

The statutory requirement that “each application shall relate to one invention only” indirectly connotes that two inventions cannot be claimed in a single (e.g., one) application. However, the question of what constitutes a “single invention” is a question of fact that is typically decided by the Controller of Patents. For example, in an application relating to a device, a claim to an overall device, and separate claims for parts that constitute its assembly may be considered one invention, but if the parts have other applications or characteristics that provide a solution to another problem which is not envisaged by the former, a lack of unity issue may arise. Likewise, with respect to chemical inventions a claim to an intermediate (I) together with a claim to compound (A) per se and a process claim for the manufacturing of compound (A) using said intermediate may be retained in a single application provided that a technical inter-relationship exists between the intermediate and the final product. Such inter-relationship may be established if the intermediate contributes to the essential structural feature of the final product.

In contrast to applications claiming mechanical inventions, the 2000 Ordinance provides the standard for determining unity for applications claiming chemical products intended for use in agriculture or medicine. Specifically, the first part of section 15(8) states that “claim or claims in respect of a complete specification of a chemical product intended for use in agriculture or medicine shall be structurally defined and shall relate to a single chemical product only excluding its derivatives and salts, each of which, with a material or a novel improvement in its claim from the main product, shall be filed a separate invention or where applicable, as a divisional application”. Without conceding to the statutory basis excluding derivatives and salts from the scope of claims directed to compounds per se, it is clear according to section 15(8) that any derivatives and salts of a claimed compound that are pursued in a separate or divisional application must show an activity that is substantially improved or enhanced compared to the compound (in free base form). A voluntary divisional covering derivatives or salts having activity in common with the compound (in free base or in congruity (1:1 ratio) with the compound) run the risk of being rejected or invalidated on the grounds of one or more of lack of subject matter, double patenting, insufficiency of disclosure, etc.

Divisional applications attempted to achieve a post-filing broadening of the claims is not allowed

As discussed previously herein, a divisional application (e.g., voluntary or compulsory) can be filed to protect a second or another invention. However, a divisional application that seeks to broaden the scope of the claimed invention will likely be refused. For example, if a parent application discloses a composition comprising a combination of compound A and compound B using water as a solvent, a divisional application covering the same composition (compound A and compound B) claiming the same activity for the composition but using non-aqueous solvent would be considered to be impermissible broadening and would not be allowable. The caveat to this is provided in section 15(5) which states: “[S]ubject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a Convention application, may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a Convention country, being developments or additions in respect of which the applicant would be entitled under the provisions of section 11 to make a separate application for a patent”. In other words, according to this section, if an Applicant files a priority application claiming an invention and identifies additional improvements relating to the invention during the priority year, the Applicant can include those improvements in its specification when filing its original (e.g., Convention) application in Pakistan (remembering that Pakistan is not a PCT member country). However, if the Applicant identifies additional improvements after both the priority year and the filing of its application in Pakistan, then those additional improvements cannot be included and/or claimed in the already filed application (i.e., any attempt to add those additional improvements will be rejected if the Applicant tries to add them by way of one or amendments to the original specification). Under these circumstances, the Applicant will need to consider whether to file for a Patent of Addition.

In summary, a divisional application can be filed in Pakistan when an Examiner raises a lack of unity of invention rejection during examination. Additionally, a voluntary divisional can be filed by an Applicant at any time prior to grant of a parent application in order to extend prosecution until the commercial value and/or likelihood of success of an innovative product is fully appreciated or realized. This ability to extend prosecution of such a divisional application is particularly helpful for pharmaceutical and biotechnology inventions where the full commercial value or likelihood of success of such products may not be realized until many years after filing.

This post was written by Lisa Mueller and Naeema Sadaf of PakPat World Intellectual Property Protection Services

Uncategorized

Filing a Divisional Application in Thailand – Part 7

Lisa L. Mueller May 12, 2020

This is the seventh 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 six posts examining divisional practice in Brazil, Mexico, China, India, Argentina and Canada and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China, Divisional Practice – India, Divisional Practice – Argentina and Divisional Practice – Canada.

Time Periods for filing a Divisional Application

In Thailand, the filing of a divisional application is governed by Section 26 of the Thai Patent Act B.E. 2522 as amended by the Patent Act (No.3) B.E. 2542 (Act), which states:

Section 26. In examining a patent application, if it appears to the competent official that the patent application involves several inventions which are not so linked as to form a single inventive concept, the competent official shall give a notification to the applicant to divide the application into several divisional applications, each of which relates to a single invention.

If the applicant files any of the divisional applications according to paragraph one within one hundred and twenty days from the date of receipt of the notification from the competent official, the applicant shall be deemed to have filed such divisional application on the date of filing of his initial application.

The division of the application shall be in accordance with the rules and procedures prescribed in the Ministerial Regulations.

In the case where the applicant does not agree with the order of the competent official, the applicant shall appeal to the Director General within one hundred and twenty days. Once the Director General has made a decision, the decision of the Director General shall be final.

Unlike many other countries, according to Section 26 of the Act, the filing of a voluntary divisional application is not permitted in Thailand. Instead, a divisional application can only be filed if an Examiner believes that the application claims multiple inventions which are not linked to form a single inventive concept. In other words, a divisional application can only be filed when an Examiner raises a “lack of unity” rejection. Typically, what occurs is that during the examination stage, the Examiner simultaneously issues two Office Actions. The first Office Action contains a lack of unity rejection that requires the Applicant to elect only a single (one) invention for prosecution. The second (simultaneously issued) Office Action, which is sent together with the first Office Action, requires the Applicant to file one or more divisional application(s) for any non-elected inventions. The Applicant is required to file any such divisional applications within 120 days following the date of receipt of the Examiner’s instructions. The filing of a divisional application beyond the 120-day time limit is not possible (e.g., any such divisional application filed will be rejected). In the event the Applicant files one or more divisional applications in response to the Examiner’s instructions, any such divisional applications are deemed to have been filed on the date of filing of the initial parent application. Because divisional applications are filed in response to a lack of unity rejection, double patenting issues generally do not arise in Thailand.

Requirements for Filing a Divisional Application

The filing of a divisional application is treated as a filing of a new patent application, thus all applicable fees, professional and official, for filing a new application, including any amendment fee, priority fee, etc. are required. However, new documentation is not required. In other words, copies of the Power of Attorney, Deed of Assignment and certified priority documents from the initial parent application can be used. Additionally, divisional applications are examined for both formality and patentability requirements. Thus, during examination, an Examiner applies the same rules regarding lack of unity with respect to an application claiming multiple inventions which are not linked to form a single inventive concept (i.e., regardless of whether the application being examined is a divisional application or an originally filed application). Additionally, the term of any divisional application is calculated based on the term of the original parent application.

The current Act is silent on whether a divisional application can be filed only off of an original (parent) applications only, or a pending divisional application. Because the Act does not contain a specific provision prohibiting the filing of a further divisional application off of an already existing divisional application, an Applicant may do so (but, as mentioned previously herein, only upon receipt of instructions from the Examiner).

Future Changes to Divisional Practice

We are pleased to report that changes to the procedures and rules regarding the filing of divisional applications are expected in the next amendment of the Thai Patent Act B.E. 2542. Under the current draft amendment, voluntary filing of divisional applications will finally become possible. Additionally, under the draft amendment, the filing of one or more divisional applications in response to an Examiner’s instructions will remain available, however, the time period for filing such a divisional application will be shortened from 120 days under the current law to 90 days. The draft amendment has undergone a public hearing and is currently being reviewed by the Office of the Council of State. Unfortunately, we do not have any clear indication when the amendment may pass into law, and the expectation is that it may take some quite time. Please continue to watch BRICS & Beyond for updates on when the draft patent amendment might pass into law.

This post was written by Lisa Mueller and Prateep Naboriboon of Satyapon & Partners Limited.

Filing a Divisional Application in Canada – Part 6

Lisa L. Mueller May 1, 2020

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:

A “same invention” or “coterminousness” branch; and
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.

Filing Divisional Application in Argentina – Part 5

Lisa L. Mueller March 30, 2020

This is the fifth 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 four posts examining divisional practice in Brazil, Mexico, China and India and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China and Divisional Practice – India.

Filing Divisionals in Argentina

The procedure for filing a divisional application in Argentina is relatively straightforward. Specifically, a divisional application can be filed up until a parent application is rejected or issues. However, in all cases, a parent application must still be pending (e.g., not rejected or issued) at the time a divisional application is filed. Moreover, if a divisional application to be filed is a divisional application of another application (e.g., a divisional of a divisional), it is necessary that both the first (or subsequent) divisional application and any parent application be pending. For purposes of illustration, the below examples are provided:

On November 1, 2019, while a parent application was pending, Applicant filed a first divisional application. Both the parent and divisional application are both currently pending. Can the Applicant file a second divisional off of the parent or first divisional application? Yes, the Applicant can file a second divisional off of either the parent or first divisional application because each is still pending. However, Applicant should make sure to file the second divisional application as soon as possible before either the parent or first divisional application issues or is rejected.
On November 1, 2019, while a parent application was pending, Applicant filed a first divisional application. Although the divisional application is pending, the parent application is currently rejected. Can the Applicant file a second divisional off of the parent or first divisional application? No, Applicant cannot file a second divisional application off of either the parent or first divisional application because the parent application is rejected. Any subsequent divisional application filed will be rejected.
On November 1, 2018, while a parent application was pending and before issuance of a first substantial examination report, Applicant filed a first divisional application. A first substantial examination in the parent application was subsequently received and the parent application issued on June 1, 2019. On June 1, 2019, the Examiner issued a notice in the first divisional application that the claims lacked unity and a first substantial examination report was issued. Can the Applicant file a second divisional off of the first divisional application? No, the Applicant cannot file a second divisional off of the first divisional application because the parent application is no longer pending and has issued. Any subsequent divisional application filed will be rejected.

The analysis provided in the examples above is how the Argentine Patent Office currently interprets the current patent law and regulations. However, there is considerable debate amongst practitioners in Argentina regarding the correctness of this interpretation. Specifically, many practitioners interpret the law and regulations as only requiring the immediate parent of a divisional application to be pending and not a grandparent or great grandparent. However, to date, there has been no litigation clarifying this interpretation.

Finally, the claims in any divisional application cannot be identical to those in a parent application. While an Applicant can initially file a divisional application having the same claims as those in a parent application, at some point during prosecution, Applicant will have to amend the claims to have different scope than those of the parent.

Please continue to watch BRICS & Beyond for updates on divisional applications in Argentina.

This post was written by Lisa Mueller and Gastón Richelet of Richelet & Richelet