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Tag: divisional application

What is a Divisional Application?

There is a whole world of patent officepatent applications beyond the original nonprovisional patent application. There are provisional, plant, design, reissue, divisional, continuation, continued prosecution, and continuation-in-part applications. These last four applications are known as continuing applications, because they continue from an original (nonprovisional) application in some way. Over the next few blog posts, I will explore each type of application.

Today, I’ll begin with a divisional application. A divisional application is an application that picks up subject matter that was divided out of an earlier application and then presents that subject matter for examination. They arise most frequently because a restriction requirement was made in the earlier application.

A restriction requirement is a requirement made by the Examiner when a patent application contains more than one invention or species of inventions; they are made because of the preclusion against a patent covering more than one invention – “one patent, one invention.” Restriction requirements are proper where an application includes claims to patentably distinct inventions, and they are often raised when an application contains claims to both a device and a process or method of using the device. Responding to the restriction requirement necessitates electing one of the inventions. An election selects a group of claims drawn to that invention for continued prosecution in the application. The remaining claims are carved from the application with leave to later file a divisional application or applications directed to those claims. Thus, a restriction requirement does not force the inventor to eliminate the other inventions, but instead, one invention is elected and the others are placed in a holding pattern until a divisional application is filed.

A divisional application can be filed on one of those “holding pattern” inventions, but it must be co-pending with the original application (or another application continuing from the original). To be co-pending, the later-filed application must be filed before either the abandonment of the earlier-filed application or the issuance of the earlier-filed application as a patent. Additionally, the divisional application must properly make a claim of priority to the earlier-filed application, and it cannot contain any matter that was not disclosed in the original application.

Once filed, the divisional application is prosecuted like any other patent application. The Examiner will perform a search on the claimed invention, objections and rejections will be issued, responses are made, and the application will hopefully be allowed. While a divisional application may seem like a headache because it involves an additional filing (and filing fees), it can be seen as an opportunity to receive more attentive examination, and perhaps better additional claims on the invention. Further, you may have learned something about the Examiner’s view of the greater inventive concept during prosecution of the original application which you can then apply to the divisional application to enhance the possibilities of an allowance.

 



Original, Continuation, and Divisional Application Strategy

The law prohibits an inventor from patenting two separate inventions within one patent application. However, sometimes an application is written with more than one invention. What happens after that original application is filed depends on the structure of the description and the claims in the original application.

If the original application includes claims to the second invention, the Examiner should make a restriction requirement. This will force the inventor to pick one of the two inventions to continue with in the original application and select the other for a second application called a divisional application (if the applicant wants to file a second application at all).

If, on the other hand, the application does not include claims to the second invention but merely describes that invention in the application, then there will be no restriction requirement. A good, solid disclosure of the second invention in the original application will, however, allow the inventor to file a continuing application before the original application issues.

In summary, when an inventor invents two similar, but patentably distinct, inventions, a variety of options are available for proceeding with both inventions. The original application can immediately spawn a divisional application in response to an Examiner’s restriction requirement or it can be the subject of a continuing application later on. The ability to do one or the other depends primarily on the decision the attorney and the inventor make and the manner in which the second invention is described and/or claimed in the original application.