The divisional patent application system allows applicants to file one or more new applications (divisional applications) based on an original application (parent application) during the patent application process. Although many countries have divisional application systems, there are differences in terms of timing and substantive requirements. This article provides an overview of China’s divisional application system.
I. Chinese Legal Provisions
Article 31, Paragraph 1 of the Patent Law
“A patent application for an invention or utility model should be limited to one invention or utility model. Two or more inventions or utility models belonging to a single general inventive concept may be filed as one application.”
Article 48 of the Newly Amended Implementing Regulations of the Patent Law
“If a patent application includes two or more inventions, utility models, or designs, the applicant may file divisional applications with the State Intellectual Property Office before the expiration of the period specified in the first paragraph of Article 60 of these regulations (i.e., before the grant registration). However, if the patent application has been rejected, withdrawn, or deemed withdrawn, a divisional application cannot be filed.”
“If the State Intellectual Property Office deems that a patent application does not comply with Article 31 of the Patent Law and Articles 39 or 40 of these regulations (the principle of unity), it shall notify the applicant to amend the application within a specified period. If the applicant fails to respond within the period, the application shall be deemed withdrawn. The divisional application must not change the category of the original application.”
Article 49 of the Implementing Regulations
“A divisional application filed according to Article 48 may retain the filing date of the original application and enjoy the priority date, if any, but must not exceed the scope of the original application. Divisional applications should comply with the provisions of the Patent Law and these regulations. The request for a divisional application should state the application number and filing date of the original application.”
II. Timing for Filing Divisional Applications
There are two ways to file a divisional application in China:
- The applicant files it proactively.
- It is filed based on the examiner’s opinion during the examination process.
While the patent application is under examination, the applicant can file a divisional application at any time.
However, the applicant should be mindful of the final deadlines for filing a divisional application under the following conditions:
- After receiving a notification of the grant of a patent, the final deadline for filing a divisional application is within two months from the date of the notification (the period for handling registration formalities).
- After receiving a rejection decision, if the applicant chooses not to file a request for reexamination, the final deadline for filing a divisional application is within three months from the date of receiving the rejection decision.
- After receiving a decision to uphold the rejection upon reexamination, if the applicant chooses not to proceed with administrative litigation, the final deadline for filing a divisional application is within three months from the date of receiving the reexamination decision.
- For voluntarily withdrawn patent applications, the final deadline for filing a divisional application is before receiving the notice of compliance with the formalities for the voluntary withdrawal request.
- For patent applications deemed withdrawn, the applicant must restore the application within two months of receiving the notice of deemed withdrawal and then file a divisional application.
During preliminary examination, if the filing date of a divisional application does not comply with the above regulations, the examiner will issue a notification stating that the divisional application is deemed not to have been filed, and the case will be closed.
For previously filed divisional applications, if the applicant needs to file another divisional application based on that divisional application, the filing deadline for the subsequent divisional application should still be determined based on the status of the original application. If the filing date of the subsequent divisional application does not comply with the above regulations, a divisional application cannot be filed. However, if the examiner issues a notification of divisional application or points out a lack of unity in the examination opinion, the final deadline for filing a subsequent divisional application should be based on the status of the divisional application with the unity defect. If it does not comply with the regulations, a divisional application cannot be filed, and the examiner will issue a notification stating that the divisional application is deemed not to have been filed, and the case will be closed.
III. Requirements for Divisional Applications
Application Type
The category of a divisional application must be consistent with that of the original application.
Filling Out the Request Form
- The applicant for the divisional application must be the same as the applicant for the original application at the time of filing the divisional application. If a divisional application is filed based on a previous divisional application, the applicant must be the same as that of the previous divisional application. If this requirement is not met, the examiner will issue a notification stating that the divisional application is deemed not to have been filed.
- The inventors listed in the divisional application must be the same as or a subset of the inventors listed in the original application. If the divisional application is based on a previous divisional application, the inventors must be the same as or a subset of those listed in the previous divisional application. If this requirement is not met, the examiner will issue a correction notification.
- The request form for the divisional application must correctly state the application number and filing date of the original application. For previously filed divisional applications, the request form must also state the application number of the divisional application. If the application number or filing date is incorrect, the examiner will issue a correction notification.
Submitted Documents and Content
- All relevant documents submitted with the original application that pertain to the divisional application are considered submitted, such as copies of priority documents, biological material deposit certificates, and viability statements.
- For invention and utility model divisional applications, the initial part of the description (before the technical field) must state that the application is a divisional application, including the original application’s filing date, application number, and invention or creation title.
- The content of the divisional application must not exceed the scope of the original application.
- The description and claims of the divisional application must be clear. The claims of the original and divisional applications must protect different inventions. However, the descriptions can vary:
- For instance, if the original application before division includes inventions A and B, after the division, the claims of the original application may still include A, while the description can either include both A and B or only A. Conversely, the divisional application claims can include B, while the description can include both A and B or only B.
Design Applications
- For original applications containing two or more designs, a divisional application must be based on one or more of these designs and must not exceed the scope of the original application.
- If the original application is for the overall design of a product, it is not allowed to file a divisional application for a part of that design.
- If the original application is for a partial design, it is not allowed to file a divisional application for the overall or another part of the product’s design.
IV. Divisional Applications for International Applications Entering the National Phase in China
According to sections 15.2.2 and 5.5 of Chapter 2, Parts 1 and 3 of the Patent Examination Guidelines, if an applicant deletes an invention or utility model due to failure to pay the unity restoration fee, they cannot file a divisional application for that invention or utility model.
If the international authority finds a lack of unity and the conclusion is correct, and the international application entering China includes inventions not searched or preliminarily examined internationally, or inventions the applicant has waived, the applicant must carefully consider whether to retain or delete these inventions when receiving the notice to pay the unity restoration fee (Form PCT/ISA/206). If the applicant does not pay the fee within two months from the issuance of Form PCT/ISA/206, they must delete these inventions, and divisional applications cannot be filed for them.
Apart from these situations, if the international application contains two or more inventions, the applicant can file divisional applications according to Article 115, Paragraph 1 of the Implementing Regulations of the Patent Law. If the international authority did not raise a unity issue during international search and examination but the application has unity defects, the applicant can file divisional applications within the specified period.
V. Deadlines for Divisional Applications
The statutory deadlines applicable to divisional applications, such as the deadline for requesting substantive examination, are calculated from the filing date of the original application. For deadlines that have expired or are less than two months from the filing date of the divisional application, the applicant can complete the procedures within two months from the filing date of the divisional application or within fifteen days from receiving the acceptance notice. If the deadlines are not met, the examiner will issue a notification stating that the application is deemed withdrawn.
VI. Fees for Divisional Applications
Divisional applications are subject to the same fees as a new application. For fees that have expired or are less than two months from the filing date of the divisional application, the applicant can pay the fees within two months from the filing date of the divisional application or within fifteen days from receiving the acceptance notice. If the fees are not paid or are insufficiently paid within the deadline, the examiner will issue a notification stating that the application is deemed withdrawn.
Note: Contrary to some reports, the cost of filing multiple divisional applications is not reduced. The fees for divisional applications in China are always the same as those for a new patent application.
Conclusion
Divisional applications can retain the priority and filing date of the original patent application, reconstruct the scope of patent protection in practice, and assist applicants in strategic patent portfolio management. So, consider whether your company needs to file divisional applications!