Working Guidelines. Question Q193. Divisional, Continuation and Continuation in Part Patent Applications

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1 Working Guidelines by Jochen E. BÜHLING, Reporter General Dariusz SZLEPER and Thierry CALAME, Deputy Reporters General Nicolai LINDGREEN, Nicola DAGG and Shoichi OKUYAMA Assistants to the Reporter General Question Q193 Divisional, Continuation and Continuation in Part Patent Applications Introduction 1) In these Working Guidelines, the following definitions are used: continuation application: a second application for the same invention claimed in a prior application and filed before the first application becomes abandoned or patented; divisional application: a later application for a distinct or independent invention disclosing and claiming (only a portion of and) only subject matter disclosed in the earlier or parent application, and continuation in part application: an application filed during the lifetime of an earlier application, repeating some substantial portion or all of the earlier application and adding matter not disclosed in the earlier application. Question Q193 is not concerned with patents of addition which may be defined as patents filed during the lifetime of an earlier application and which relate to an improvement or modification of the invention of the earlier application not having been disclosed in the earlier application. 2) Divisional, continuation and continuation in part applications are important and useful tools of patent granting procedures. They serve the needs of patent granting authorities as well as of applicants. Patent offices issue restriction requirements in order to enforce unity of invention rules. Applicants respond by filing divisional applications. 3) In most systems, applicants are entitled to file divisional, continuation and continuation in part applications also in order to avoid rejections or to accelerate the patent granting proceedings for one or more undisputed part(s) of the application. 4) It appears that divisional, continuation and continuation in part applications are occasionally used as tools for achieving strategic goals, perhaps not always in line with the basic principles underlying the patent systems. 5) Where divisional, continuation or continuation in part applications are used to a wide extent in order to obtain a second appraisal, perhaps in the light of recent changes in case law, of applications that have been finally rejected by the relevant patent granting authorities, this may add significantly to the backlog of patent granting authorities, with the effect that the examination of genuinely new applications is delayed. 6) Such a practice may also create legal uncertainty for third parties who are not able to rely on the final rejection of original applications. 7) Furthermore, where cascades of divisional, continuation and continuation in part applications exist within the same patent family, this may significantly deteriorate the ability of third parties of creating a realistic overview of the potential rights that may have an impact on their freedom to operate. 8) It is the purpose of this Question to consider issues surrounding divisional, continuation and continuation in part applications, and to explore what are the conditions under which such applications may be filed in various patent systems and how such applications are treated. 9) It is also the purpose of this Question to explore whether and, if so, how this aspect of national and regional patent filing systems could or should be harmonised. 1

2 Discussion 10) According to Article 4 G(1) of the Paris Convention, an applicant may divide his patent application into several individual applications where a unity of invention problem arises during prosecution of his application. In that case, the filing date of the parent application shall apply equally for the divisional application, or applications, and the divisional application, or applications, shall have the benefit of any right of priority. 11) According to Article 4 G(2) of the Paris Convention, the applicant may also choose to voluntarily divide his application for other reasons. In that case, too, the filing date of the parent application shall apply equally for the divisional application, or applications, and the divisional application, or applications, shall have the benefit of any right of priority. Each contracting state shall, however, lay down the conditions under which such a voluntary division may occur. 12) In the United States, a continuing (i.e. continuation, continuation in part, or division) national or international application may according to section 120 of United States Code Title 35 claim benefit of the filing date of the previously filed application, if specific reference is made to the earlier filed application, if the continuing application is copending with the earlier filed application, and if it has at least one inventor in common with the prior application. According to section 121 of United States Code Title 35, the Director may, if two or more independent and distinct inventions are claimed in one application, require the application to be restricted to one of the inventions. If the other invention is made subject to a divisional application it shall be entitled to the benefit of the filing date of the original application. 13) The USPTO has on January 3, 2006, proposed changes in continued examination practice. The overall purpose of the proposal is to reduce the backlog of unexamined applications, to avoid unlimited strings of continued examination filings from initial applications and to enforce the public notice function of patent claims in the initial application. In essence, the proposed rules limit a patent applicant to one continued examination filing as a matter of right. Continued examination filings include continuation applications, continuation in part applications and divisional applications (and requests for continued examination). Second and subsequent continuing applications can be filed only to obtain consideration of an amendment, argument or evidence that could not have been submitted during the prosecution of the prior filed application. 14) According to Article 76 of the European Patent Convention, a European divisional application may be filed only in respect of subject matter which does not extend beyond the content of the earlier application as filed. It may not designate Contracting States which were not designated in the earlier application. There is no numerical limitation in relation to the filing of divisional applications. According to Rule 25 of the implementing regulations, the applicant may file a divisional application to any pending earlier European patent application, including a previously filed divisional application, i.e. cascades of divisionals are allowed. 15) In Japan, a review of the rules governing divisional applications has recently been carried out, by way of a comparative law study, resulting in certain modifications, expected to take effect from April It was decided not to opt for a US style system of allowing continuation in part applications. The modified law will allow applicants to file divisional applications even after receiving notice of allowance of the parent application, or following a decision of rejection thereof. 16) In China, new guidelines for examination entered into force as of July 1, Under the guidelines, it is no longer possible for an applicant to file a divisional application derived from a previously filed divisional application, i.e. cascades of divisionals are no longer allowed. The only exception to this rule pertains to divisional applications derived from a pending divisional application when a unity of invention issue is brought up in the prosecution of a pending divisional application. 2

3 Questions National and Regional Groups are invited to answer the following questions: I) Analysis of the current law 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? 3) Under what circumstances and conditions may divisional, continuation and continuation in part applications (or combinations thereof) be filed in your national or regional patent system? 4) Are cascades of divisional, continuation and continuation in part applications allowed, i.e. is it possible to file a divisional, continuation or continuation in part application on the basis of another divisional, continuation or continuation in part application? 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? 6) Is it a requirement for filing an application that is a divisional, continuation or continuation in part of an original application (or of another divisional, continuation or continuation in part thereof) that the original application (or the direct parent application, or both) is still pending at the time of filing of the divisional, continuation or continuation in part application? 7) Is it a requirement that the original application (or the direct parent application, or both) is still pending throughout the prosecution of a divisional, continuation or continuation in part application derived therefrom? 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? 9) In particular, may the description and/or claims contain or claim matter that was not contained or claimed in the original application, or other application from which the divisional, continuation or continuation in part application derives? 10) Is it possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter, to the extent the addition of new matter is allowed? 3

4 11) Is double patenting permitted or must the matter claimed in divisional, continuation or continuation in part applications be deleted from the claims of the original application, or other application from which the divisional, continuation or continuation in part application derives? 12) Does it matter in this respect whether the divisional, continuation or continuation in part application was filed in response to a restriction requirement issued by the patent granting authority? II) Proposals for adoption of uniform rules 1) In the opinion of your National or Regional Group, what are the advantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? 2) In the opinion of your National or Regional Group, what are the disadvantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? 3) In the opinion of your National or Regional Group, should the filing of divisional, continuation or continuation in part patent applications, respectively, be permissible? 4) If international harmonisation were to be achieved in respect of the rules governing divisional or continuation patent applications, what should be the common rules in respect of the circumstances and conditions in which divisional, continuation or continuation in part applications may be filed? 5) In particular, should a harmonised system permit the addition in a divisional, continuation or continuation in part application of matter that was not contained in the original application as filed? 6) Should it be permitted to use a divisional, continuation or continuation in part patent application to obtain new examination and decision of an application that contains claims that are identical or essentially identical with claims finally rejected in the course of the prosecution of the parent application? Should there be an exception where case law on the substantive conditions for patent grant of the patent granting authority has changed since the parent application was rejected? Would this possibility adequately take into account the interests of third parties in legal certainty? 7) Should it be possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter? 4

5 8) In the opinion of your Group, would it be justified to limit the access to filing divisional, continuation or continuation in part applications primarily with the object of limiting the backlog of patent granting authorities? 9) In the opinion of your Group, would it be desirable, in the interest of legal certainty of third parties, if databases of patent granting authorities ensured that a clear link was always indicated between original patent applications and all divisional, continuation or continuation in part applications derived therefrom? National and Regional Groups are invited to make any additional comment concerning divisional, continuation and continuation in part applications which they find relevant. Note: It will be helpful and appreciated if the Groups follow the order of the questions in their Reports and use the questions and numbers for each answer. 5