What is a divisional application?
A divisional patent application is a type of patent application, which contains subject matter disclosed in a previously filed parent application. Typically, the description and drawings of such divisional application are identical with or similar to the parent application. However, the claims of the divisional application defining the scope of protection must be different to the claims of the parent application. It is not possible to add new subject matter (new information) to the divisional application, i.e. the divisional application can only be based on what is disclosed in the parent application.
In other words, by filing of a divisional application it is potentially possible to obtain patent protection for aspects or viewpoints not claimed but disclosed in the parent application. The divisional application will be considered as an independent patent application after filing, i.e. its prosecution is not dependent on the parent application. It will expire at the latest at the same time as the parent application.
When can a divisional application be filed?
The last possible moment for filing a divisional application varies from one country to another. For example, at the European Patent Office, filing of a divisional application is only possible as long as the parent application is pending, i.e. before grant of a patent in the parent case. In some countries, it is only possible to file a divisional before replying to a first office action, while in others, it may even be possible to file a divisional shortly after grant.
When should a decision with regards to filing of a divisional application be made?
This depends on the country and the possible last moment for filing the divisional. A brief consideration should ideally be made every time the claims are amended, i.e. to think whether the possible deleted subject-matter could still be pursued in a divisional application. Similarly, in case the application has on purpose been drafted such that it contains unclaimed subject-matter in its description, this is good to keep in mind during prosecution of the application.
In which jurisdictions is filing of a divisional application possible?
Generally, filing of a divisional application is available in most jurisdictions.
What are the advantages of filing a divisional application?
Filing of one or more divisional application(s) can i.a. provide the following advantages:
- Obtaining patent protection for different aspects or viewpoints disclosed in the parent application in order to create a patent portfolio for a specific type of technology so that it will be more difficult for a competitor to design around a particular invention/technology. A divisional application or applications may allow obtaining stronger and broader protection.
- Maximizing economic benefit in case a specific technology should be sold or licensed to another party.
- Creating a patent portfolio for a specific type of technology for attracting new investors or for applying for public funding.
- Maintaining pendency of the application family, e.g. for the following reasons:
- The claims of a granted patent can typically not be amended (changed) anymore, i.e. a competitor can analyse a granted patent, (learn from what is taught in the patent) and try to find a solution for designing around what is claimed in the patent in order to come up with a similar solution outside of the scope of protection of the patent. At least one further pending divisional application in the same patent family is somewhat “confusing” for a competitor, because the competitor is not able to estimate whether and for what subject matter a further patent will be potentially granted in the future. In other words, a pending divisional application creates a strong market entry barrier for a competitor in the same field of technology in addition to a granted patent.
- A divisional application can be useful to have pending to be able to modify claims in the future to cover specific infringement or licensing scenarios.
- A divisional application can be a straightforward solution for overcoming a unity objection presented by a patent office, i.e. in case the patent office considers that the claims cover more than one invention.
What are costs of filing a divisional application?
The costs for filing and prosecution of a divisional application are similar to the costs of filing and prosecution in the parent case. However, in some jurisdictions, such as at the European Patent Office, all renewal fees that have been due for the parent application, must also be paid for the divisional application upon filing.
When should a divisional application be filed?
Filing of a divisional application is of particular interest with regards to technology considered as future core technology.
In which jurisdictions should a divisional application be filed?
Filing of a divisional application is of particular interest with regards to future core markets. The need to file a divisional application also depends on the expected scope of protection in a given jurisdiction.
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