Reflections on alternative divisional applications

Issue24 By Fu Yu,[Patent]

I. Introduction


      Under Rule 42.1 of the Implementing Regulations of the Patent Law (Implementing Regulations), where an application for a patent contains two or more inventions, utility models or designs, the applicant may, prior to the expiration of the prescribed time limit, submit a request for a divisional application to the Patent Administration Department under the State Council. However, where an application for a patent has been rejected, withdrawn, or deemed to have been withdrawn, no divisional application may be filed. Therefore, in the usual sense, our understanding of divisional applications is closely related to the unity requirement of patent applications, or it can be understood that divisional applications and patent applications reflect two aspects of the unity problem, i.e., a single subject matter may be submitted in one application, whereas a non-single subject matter may usually need to be filed in a divisional application on the basis of the original application. The examiners in practical examinations, however, frequently encounter cases for divisional applications which have nothing to do with unity. Here we may tentatively refer to these types of divisional applications as “atypical divisional applications.” This writer will try to analyze such atypical divisional applications through two actual cases.

II. Facts of the cases

Case 1: A review case, in which this writer was the chief examiner, upon application No.00121914.6, a divisional application for INFORMATION PROCESSING APPARATUS, filed on July 18, 2000, and rejected on September 9, 2005, to which petitioner for review was filed December 9, 2005. The parent application, No. 99106242.6, for INFORMATION PROCESSING APPARATUS filed on April 16, 1999, entered substantive examination phase December 31, 1999, and a first Office Action was issued April 11, 2003. By January 11, 2006, the parent application was deemed to have been withdrawn. In this case, the claims in the divisional application were identical to those in the parent application.

Case 2: A review case, in which this writer was the chief examiner, upon application No.00809086.6, for PORTABLE MINI-CARD SIZED MODULE READER FOR CONNECTION TO THE PORT OF A PERSONAL COMPUTER.” The (Patent Reexamination Board) Panel issued adjudication on June 11, 2007 sustaining the rejection (where neither the rejection nor the adjudication involved the issue of unity). Applicant moved for judicial review on September 11, 2007, the very last day before the deadline, but voluntarily withdrew the case after it was filed in court. It turned out that applicant had filed a divisional application under No.200710149060X with the Patent Office on September 7, 2007. The divisional had claims broader than the parent.

Obviously, Case 1 involves a divisional application which was filed after the parent application went into substantive examination but before the first Office Action; Case 2 involves a divisional which was filed during court proceeding. Under the MPEP, Part I, Chapter 1, Rule 5.1.1,1 “An applicant shall submit a divisional application no later than the expiration of the two months (i.e. the time limit for going through the formalities of registration) from the date of receiving the Notification to Grant Patent Right to the initial application issued by the Patent Office. With regard to the initial application to which the examiner has issued the decision of rejection, the applicant may file a divisional application within three months from the date that the applicant receives the decision of rejection regardless of whether the applicant requests for reexamination or not. The applicant, after requesting for reexamination or during the initiation of the administrative litigation against the reexamination decision, may also file a divisional application.” The two divisional applications mentioned above were timely filed in conformity with the relevant provisions.  Moreover, they were both voluntarily filed by the applicants without an Office Action on unity. Hence, these two “atypical” divisional applications were not filed because of the unity requirement.

In Case 1, the claims in the divisional application were identical to those in the parent application; whereas, in Case 2, the divisional application broadened the scope of the claims of the parent application. Therefore, it can be seen from these two cases that an applicant’s motivation for filing a divisional application is to maximize the protection of his own interests:  to prolong the examination process for the parent application because the parent did not have the prospect of being allowed; or to obtain a different examination result in a speculative manner by taking advantage of the possibility that different examiners may have different understandings of the examination standard, or to change and/or broaden the scope of protected claims by making amendments to the divisional application within the scope. To some extent, these kinds of atypical divisional applications have the same features as continuation applications in the U.S. patent application process.2

III. Continuation applications under U.S. practice


 Under the U.S. Patent Act, there are three types of continuation applications: continuation, continuation-in-part, and divisional, with unique features under each.

1. Continuation 
 The description of a continuation application cannot contain any new subject matter in relation to the parent application and, yet the claims in the continuation should be different from those in the parent. In the event that all the claims in the parent are rejected, or some of the claims in the parent are required to be deleted as a condition for patent, the applicant usually can revive the application for further examination by filing a continuation with the rejected claims or those that have been required to be deleted from the parent.

2. Continuation-in-part applications (CIP)
A continuation-in-part application offers an applicant an opportunity to add new subject matter. For a continuation-in-part application, claims to subject matter previously disclosed in the parent application are entitled to the parent’s priority date, while claims to the additional subject matter are only entitled to the filing date of the continuation-in-part application. The filing of the continuation-in-part application will lead to the abandonment of the prior application with the same subject matter. Thus, the continuation-in-part application is similar to China’s domestic priority. The difference between them lies in the different restrictions on the time for submitting applications.

3. Divisional
A divisional application is a kind of continuation application that is separate from, but based on the parent application under examination. In relation to the parent application, a divisional application is for an independent and different invention. The contents of the divisional application have been disclosed in the parent application and the divisional application enjoys the priority date of the parent. This is in accordance with the common understanding of divisional applications in China.
Despite the provisions regarding these different types of continuation applications, the U.S. Patent Act contains no restriction on the quantity of continuation applications. Its goal is to give an applicant more examination time rather than to appeal so that the applicant can obtain as much patent protection as possible.

IV. Analyses and reflections


     As far as China’s current Patent Law and its Implementing Regulations are concerned, the legislative intent of Article 31 of the Patent Law is to allow an applicant to include in one application two or more invention-creations belonging to a single general inventive concept so as to decrease the cost incurred by the applicant from the patent application and to encourage invention-creations. The legislative tenet of Rule 42.1 of the Implementing Regulations is to allow an applicant to file different applications for invention-creations not belonging to a single general inventive concept by submitting divisional applications. Logically, the reason for filing a divisional application should be to comply with the unity requirement of the parent application; in other words, the claims of the divisional must not be in unity with those in the parent. However, neither the statute nor the Implementing Regulations provides express definition on divisional application. The provision regarding the contents of divisional applications is merely laid down in Chapter 6, Section 3.2 of Part II of the Guidelines, which states, “The claims of the parent application after division and the divisional application shall claim protection of different inventions respectively.”

First, in the author’s view, during the preliminary examination of a divisional application, the main concern is the formality of the divisional application and the relevant examination does not involve whether the divisional application and the parent application belong to a single general inventive concept. Therefore, even if an applicant submits a divisional application with claims identical to the parent application (as in Case 1), the divisional application can still enter the stage of substantive examination after passing the preliminary examination.

Second, during the substantive examination, different examiners may have a different understanding as to the meaning of “different inventions” as found in the Guidelines: “the claims of the parent application after division and the divisional application shall claim protection of different inventions respectively.” One opinion is that in terms of the composition style of the Guidelines, unity and divisional applications are addressed in one chapter, moreover, the legislative intent of divisional applications has its source in the unity requirement. Therefore, the phrase “different inventions” means that the protections claimed in the divisional application and the parent application should not be for inventions belonging to a single general inventive concept. The other opinion is that in actual examinations, even if the examiner discovers that a divisional application is not for “an invention belonging to a single general inventive concept” relative to the parent application, he is unable to ban this act by invoking relevant statutes, and thus, more often than not, he interprets “different inventions” to be “identical invention-creations” as prescribed in Chapter 3, Section 6.1 of Part II of the Guideline. Thus, the examiner’s understanding of “different inventions” is to avoid double patenting. The gap between the Patent Law and its Implementing Regulations, as well as the Guidelines, creates room for the existence of these alternative divisional applications. In practice, the examination process has also witnessed more and more of such alternative divisional applications.

Furthermore, the existence of alternative divisional applications also deserves attention as an abnormal form of amendment. Detailed provisions have been set forth in the Patent Law and its Implementing Regulations as well as the Guidelines with respect to the amendment of an application document. Article 33 of the Patent Law provides for the contents and scope of an amendment to application documents. Rule 51 of the Implementing Regulations provides for the time and manner for making amendments to application documents that have entered the substantive examination stage. Rule 60.1 of the Implementing Regulations provides for the time and manner to amend those application documents that have entered the reexamination phase. Chapter 8, Section 5.2 of Part II and Chapter 2, Section 4.2 of Part IV of the Guidelines have also laid down specific provisions regarding relevant amendments. It can be seen from the above provisions that in addition to abiding by the general provision that an amendment must not go beyond the scope described in the initial description and claims, any amendment made by an applicant must also be in conformity with the requirement of the notification issued by the examiners (or the collegiate panel), especially where it is not beneficial to economize the examination procedure (for the specific circumstances, please see Chapter 8, Section 5.2.1 of Part II and Chapter 2, Section 4.2 of Part IV of the Guidelines). The Guidelines explicitly state that even though the contents of such an amendment do not go beyond the scope disclosed in the initial description and claims, the amendment shall not be deemed to be agreed to by the examiner, and therefore the amendment shall be unacceptable. However, if the applicant makes an amendment that is not beneficial to economize the examination procedure by submitting the aforementioned alternative divisional application, he can easily circumvent the provision that the above application document is unacceptable because there is no reason to reject the alternative divisional application, whether it is in the hands of the initial examiner or a different examiner. Will such division in place of an amendment make the relevant provisions of the Guidelines nothing but an empty shell? The applicant may, by filing an application for division, broaden or amend the scope of protection at an uncertain time and out of his own will. Will this lead to the abuse of divisional applications and therefore result in a waste of examination resources?

Based on the above analyses and reflections, this author would recommend express indications in the Patent Law and its Implementing Regulations in future revision as to “legitimacy” of these atypical divisional applications and the meaning of “separate inventions” in Chapter 6, Section 3.2 of Part II of the Guidelines. Additionally, in the course of the actual examinations, there should be an intensified connection between parent applications and divisional applications by establishing a page link for examining divisional applications and parent applications in the C4 system to be put into use, or by setting up search characters for a parent application number search in the cprs system. By doing so, examiners can easily observe the relationship between divisional applications and parent applications.
The above is just the author’s personal opinion. Hopefully it will play the role of “casting a brick to attract jade” in the revision of the Patent Law and its Implementing Regulations.

Endnotes:
1. The State Intellectual Property Office of the People’s Republic of China, Guidelines for Examination 2006, Part I and Part II, Intellectual Property Press.
2. Chen Wei, Qian Hongying & Jiang Tong, A Brief Introduction to the Legal System of U.S. Intellectual Property, Examination Affairs Newsletter, 2007, 7th issue.

About the author:
       Fu Yu is the 2nd Division of Appeals, the Patent Reexamination Board of the State Intellectual Property Office.

                                                                         (Translated by Zhang Meichang)

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