Different from continuation application system in the US, China has its own stipulations about divisional application system.
What is the Divisional Application System in China?
According to Article 42 of Rules for the Implementation of the Patent Law of the People’s Republic of China (Rules for Implementation), where an application for a patent contains two or more inventions, the applicant may submit a divisional application before the expiration of the time limit. However, where an application for patent has been rejected, withdrawn or is deemed to have been withdrawn, no divisional application may be filed. There is no limit to the type of patent application, which may be invention, utility model or design.
The Chinese Patent Law and the Rules for the Implementation have defined the “requirements” and “rights” of a divisional application.
Requirements: A divisional application and its parent application should be the same type. For example, if the parent application is an invention application, the divisional application should also be an invention application. A divisional application shall not go beyond the scope of disclosure contained in the initial application.
Rights: A divisional application may claim the priority of its parent application, and if the parent application has priorities, the divisional application may claim the priority of the earliest application.
What are the Types?
According to the Chapter I 5.1.1, Part I and the Chapter VI 3.1, Part II of Guidelines for Patent Examination, a divisional application can be divided into the following three types.
When to File?
1. For a first-filed divisional application:
1) If the initial application receives the Notification to Grant Patent Right issued by the Patent Office, the applicant may file a divisional application within two months from the date of Notification, i.e., within the time limit of the registration procedure.
2) If the initial application receives the Decision of Rejection, the applicant may file a divisional application within three months from the date of the Decision regardless of whether the applicant requests for reexamination or not.
3) The applicant, after requesting for reexamination or during the initiation of the administrative litigation against the reexamination decision, may file a divisional application.
4) Where the initial application has been withdrawn, the applicant may file a divisional application before receiving the Notification of Passing Examination on Formalities.
5) Where the initial application is deemed to have been withdrawn, the applicant may file a divisional application within two months of receiving the Notification that Application Deemed to be Withdrawn.
6) The applicant may file a divisional application on his own initiative within the above time limit.
2. For a sub-divisional application:
Where an applicant files a sub-divisional application, i.e., another divisional application based on an already filed divisional application, the submission date of the sub-divisional application shall be decided by the initial application. Where the submission date of another divisional application is not in conformity with the above provisions, no divisional application shall be filed.
However, there is an exception that the sub-divisional application is filed by the applicant according to the Office Action made by the examiner due to a unity defect in the divisional application. That is, a divisional application shall be filed as a response to an Office Action noting the defect of lack of unity by the examiner, and the time limit for submission shall be reviewed on the basis of the application with unity defect.
Contents of Divisional Application
A divisional application shall not go beyond the scope of disclosure contained in the initial application. When submit a divisional application, attention should be paid to the contents:
The claims of a divisional application shall not go beyond the scope of disclosure contained in the initial application. The claims of a divisional application should be fully supported by the specification of initial application.
The claims of a divisional application should be different from the scope of the initial application, to satisfy article 9 of the Patent Law, “The principle of non-double patenting.(for any identical invention-creation, only one patent right shall be granted)”
According to Guidelines for Patent Examination, “Identical invention-creation” means claims which exist in two or more applications or patents, and have the same extent of patent protection.
A divisional application may use the specification of the initial application directly. Or, the specification of a divisional application may be extracted from the specification of the initial application to support the claims of the divisional application.
3. Out-of-scope judgement
In general, a divisional application may only rewrite the claim part. So, out-of-scope judgment mainly focuses on whether the claims of a divisional application are out of scope.
It should be noted that if each technical feature of the claims is supported in the specification, while the general technical solution is not recorded in the original application, or the general technical solution is derived from different embodiments, rather than included in one embodiment, then the divisional application will be deemed out-of-scope.
4. Other requirements
1) Type: as previously mentioned, the application type of a divisional application should be the same with that of the parent application.
2) Applicant: the applicant of a divisional application should be the same with that of the parent application.
3) Inventor: the inventor of a divisional application should be the inventor or part of the inventors of the parent application.
Divisional Application System in China VS Continuation Application System in the US
With respect to the continuation application system of the US, applicant may submit continuation application based on the parent application, or file another continuation application based on an already filed continuation application. As long as there exists one pending application derived from the initial application, applicant may submit continuation application to the USPTO and claim priority of the initial application. In other words, applicant may constantly submit continuation application to keep the patent family pending.
With respect to the divisional application system of China, the time limit for filing a divisional application is based on the initial application. Generally speaking, a divisional application should be filed before the initial application is issued, rejected or withdrew (specific time limit may refer to the previous part). If the time limit is expired, no divisional application is allowed to be filed even if there exists pending divisional application in the patent family.
In other words, under Chinese patent system, it is not feasible to keep the patent family “alive” by constantly filing divisional applications. “Alive” here means divisional application can be filed. For example, application A is the first-filed application, and application B is the divisional application filed based on application A. If the application B is still under substantial examination but the application A is issued and the time limit is expired, you are not allowed to file divisional applications based on the application B.
If the applicant wishes to achieve the effect of the US continuation application system, the best strategy is to keep the parent application pending for as long as possible. For example, the applicant may use the deferred examination system of China, which may slow down prosecution in the parent application and allow more time for the filing of divisional applications.