Frequently Asked Questions about Divisional Patent Applications

Answer:

No. A divisional application must be of the same type as the parent application. For example, a divisional application of an invention application must also be an invention application; it cannot be converted to a utility model.

Answer:

Generally, a divisional may be filed while the parent application remains pending. It may be filed until the end of the two-month period following receipt of the patent grant notification, which is also the period for completing registration formalities.

If the parent is rejected, the applicant may file a divisional within three months of receiving the rejection, regardless of whether re-examination is requested. A divisional may also be filed during re-examination, within three months of receiving the re-examination decision, or during administrative litigation challenging that decision.

No divisional may be filed from an application that has been voluntarily withdrawn or is deemed withdrawn.

Answer:

No. A divisional may cover any technical solution disclosed in the parent application. If the parent has been rejected and the applicant does not request re-examination, a divisional may offer a chance of a different examination outcome, although that prospect is relatively limited.

A divisional can also provide an opportunity for voluntary amendment while the parent is under substantive examination, after a grant notification but before the registration deadline, or where the applicant is dissatisfied with a re-examination decision and wishes to amend the application documents.

Answer:

This generally depends on whether the original parent application remains pending. If it does, another divisional may be filed. If it does not, further divisionals are generally unavailable.

There is an exception where an existing divisional has a lack-of-unity defect: a further divisional may be filed in response to the examiner’s office action even though the original parent is no longer pending.

Answer:

The applicant may differ from that of the parent, provided documentation establishing the change is submitted. The inventors of the divisional must be all or some of the parent application’s inventors; new inventors cannot be introduced.

Answer:

Not necessarily. The deadline is three years from the parent’s filing date or priority date. If that period has already expired, or less than two months remain when the divisional is filed, the applicant may request substantive examination within two months of filing the divisional or within 15 days of receiving the Notification of Acceptance.

Answer:

The same examination standards apply to amendments of the divisional and the original application. An amendment must not extend beyond the disclosure of the original application.