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Explicit submission of a further divisional application
date: 2019-04-28 Ruixian Liu Read by:

We have encountered a special patent application - a further divisional application thereof was filed and accepted after the parent patent application has been authorized for about 10 years and a divisional application has been granted for about 4 years, and the further divisional application was granted after the patent right of the parent application expired.

The reason for the further divisional application being accepted and granted is that the applicant fully utilized the exception of the division application prescribed in the guideline for patent examination. That is, if a further divisional application is filed by the applicant due to a unity defect in the divisional application, there is no time limit requirement in the guideline for patent examination.

This situation is unfavorable to the public, because the public only sees the scopes of the current authorization claims of the parent application and the divisional application and cannot sufficiently predict the possible scope of a further divisional application, so that the possibly manufactured product or used method by the public may fall into the scope of the further divisional allocation, thereby resulting in infringement. Thus, when making an infringement analysis, the company needs to consider the scope of a further possible divisional application that the patentee may obtain from the technical content presented in the specification of the patent application in addition to looking at the authorization texts of the patent application and the divisional application.

Possibly considering this situation, the State Intellectual Property Office issued the “Draft Revision of the Patent Examination Guidelines (Draft for Comment)” on April 4, 2019, in which the first chapter of the first part of the Patent examination guideline would add the time for submitting a further divisional application based on the already filed divisional application. The submission time of the further divisional application shall be reviewed according to the divisional application having the unity defect. This clearly regulates the time for submitting the further divisional application, thus avoiding the above situation and avoiding different review criteria for the further divisional application in the practice.

If the provisions above are passed, the time for submitting the further divisional application shall be no later than the expiration of the two-month from the date of receiving the notification to grant patent right to the divisional application having the unity defect, within three months from the date that the applicant receives the decision of rejection and during the initiation of the administrative litigation against the reexamination decision for the divisional application having the unity defect, i.e the further divisional application should be filed when the divisional application having the unity defect is pending.

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