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Common questions on filing a divisional application
date: 2019-01-29 Xia Wang Read by:

In the process of handling a patent application, the attorney will encounter various problems regarding a Chinese divisional application, for example, “Our client would be interested in filing a Chinese divisional application of the above-identified application. Could you please let us know 

- whether filing a divisional application is still possible? 

- whether we may file the same claims as the initial claims of the parent case, and 

- what costs we should roughly expect for filing a divisional application? ”

In order to answer such questions about a Chinese divisional application, a summary is made as follows.

Deadline

Question 1: Whether filing a divisional application is still possible?

    According to Rule 42.1 of the Implementing Regulations of the Chinese Patent Law, where an application for a patent contains two or more inventions, utility models or designs, the applicant may, before the expiration of the time limit provided for in Rule 54, paragraph one of these Implementing Regulations; submit to the patent administration department under the State Council a divisional application. However, where an application for patent has been rejected, withdrawn or is deemed to have been withdrawn, no divisional application may be filed.

    These legal terms seem to be a bit confusing.  Let me summarize briefly, in general, a divisional application can be filed at any time before expiry of two months from the date of receiving a Notification to Grant Patent Right issued by the Chinese Intellectual Property Office, or before a final rejection comes into force.  In short, as long as an initial application is pending, i.e. not closed, the applicant can file a divisional application.

For a better understanding, the timings for filing a divisional application are divided into three groups.

    1)      The application is under examination or is granted.

         - If an initial application is under an examination stage, a divisional application can be filed anytime during this stage.

         - If the application is granted, a divisional application can be filed before expiry of two months from the date receiving a Notification to Grant Patent Right.

    2)      The application is rejected.

        - If receiving a Final Rejection from the Chinese Intellectual Property Office, a divisional application can be filed within three months from the date receiving the Final Rejection. 

        - If a request for reexamination is filed for the application, a divisional application can be filed during the procedure of reexamination.

        - If the Patent Reexamination Board makes a Decision to Maintain the Final Rejection, a divisional application can be filed within three months from the date receiving the Decision to Maintain the Final Rejection.  If the Final Rejection is withdrawn, the application becomes pending again, and a divisional application can be filed at this stage.

        - If the applicant is not satisfied with the Decision to Maintain the Final Rejection and institute legal proceedings, the application becomes pending again, and a divisional application can be filed at this stage.

    3)      The application is deemed to have been withdrawn.

        - If receiving a Notification that Application Deemed to be Withdrawn from the Chinese Intellectual Property Office, the applicant can file a right of restoration within the relevant time limit according to the provisions of Rules 6.1 and 6.2 of the Implementing Regulations of the Chinese Patent Law, and then the applicant can file a divisional application based on the initial application.

        - If the applicant voluntarily withdraws the application, a divisional application can be filed before a Notice of Procedure Qualification is issued by the Chinese Intellectual Property Office.

Document

Question 2: Why the claims of the US family application have been granted, but the Chinese application having the same claims is rejected for amendments going beyond the scope of the initial application? Do we need to amend the descriptions and drawings?

    According to the provisions of Rule 43.1 of the Implementing Regulations of the Chinese Patent Law, the content of the divisional application shall not exceed the scope of the initial application. Compared with some Patent Offices in other contrary around the world, such as the US Patent and Trademark Office, the Chinese Intellectual Property Office will strictly examine whether the contents of a divisional application fall within the scope of the initial application.

    What should we do? Usually when filing a division application, we will submit a copy of new claims, the features thereof are preferably literally recorded in the initial application; and we recommend submitting the initial description and drawings for the division application without making any amendment so as to minimize the risk of going beyond the initial scope.

Official fee

Question 3: What costs we should roughly expect for filing a divisional application?

Filing a divisional application, like filing a new application, should be subject to all of the relevant official fees.

Very important issues

Question 4: Can I change the type of application when submitting a divisional application?

    No, if the initial application is an invention, the divisional application must be an invention; and if the initial application is a utility model, the divisional application must be a utility model.

Question 5: If a first application itself is a divisional application, can the applicant still file a second divisional application based on the first divisional application?

    If the applicant has filed a fist divisional application and intends to file a second divisional application later, the deadline for filing the second divisional application should be calculated according to the relevant date of the initial parent application, rather than the first divisional application. 

    That is to say, if the deadline for filing a further divisional application based on the initial application is expired, the applicant has no opportunity to file a second divisional application. 

    But there is an EXCEPTION! If the first divisional application is rejected by the examiner for lacking unity in an Office Action, the applicant could file a second divisional application, at any time before expiry of two months from the date of receiving the Notification to Grant Patent Right issued by the Chinese Intellectual Property Office or before a final rejection comes into force for the first divisional application.

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