Denmark Danemark Dänemark Report Q193 in the name of the Danish Group by Ejvind CHRISTIANSEN, Torsten NØRGAARD and Holm SCHWARZE Divisional, Continuation and Continuation in Part Patent Applications Questions I) Analysis of the current law 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? In Denmark it is possible to file divisional applications in respect of an invention disclosed in a parent application for which a final decision has not yet been issued. Danish law does not provide for continuation or continuation in part applications as such. However, in addition to filing divisional applications, though rarely used, Danish law provides the possibility of filing a so called separated ( udskilt ) application. Such a separated application may be filed in respect of subject matter which was disclosed in the parent application at the time of filing the separated application but not included in the parent application as filed, e.g. subject matter which was disclosed in a subsequently filed document during the prosecution of the parent application. Upon request, the separated application is deemed to be filed on the date on which the documents disclosing the subject matter of the separated application were filed with the Danish patent office and, consequently, such a separated application is not entitled to the earliest priority of the application from which is originates. Since Denmark, like the EPO and most European Countries provides for filing applications with internal priority, such later applications containing added subject matter would in principle be tantamount to continuation in part applications with partial priority. In practice, however such applications would to day normally be filed as EP or PCT applications designating DK. Denmark is a contracting state of the European Patent Convention. Consequently, divisional applications of European patent applications are also available in respect of Denmark as a designated contracting state. Finally, as a yet further possibility of obtaining separate protection for an invention disclosed in a patent application, an applicant may branch out a Danish utility model from a Danish patent application, a European patent application or a PCT patent application designating Denmark. 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? While commentators highlight situations where an application relates to more than one non unitary inventions as a typical example of the filing of divisional applications, the availability of divisional applications under Danish law is not restricted to this situation. In particular, an applicant may, if he/she so wishes for whatever reason, file a divisional application in respect of an invention which is dependent on the invention sought protected in the parent application or for one of several unitary inventions disclosed in the parent application. 1
Furthermore, as regards separated applications, an applicant may file a separated application in respect of newly introduced subject matter which is not entitled to the filing date of the parent application, while the parent application may remain limited to the original subject matter and retain its original filing date. 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? The conditions for filing divisional and separated applications include the following in particular: The subject matter of a divisional application may not go beyond the content of the parent application. In contrast, the subject matter of a Danish separated application must have been introduced into the parent application at some point during the prosecution of the parent application. The content of a divisional application, on the other hand, must have been included in the parent application as from the date of filing. A divisional or separated application may be filed as long as a final decision has not yet been issued in respect of the parent application. A divisional or separated application has to be identified as such upon filing, and the parent application has to be identified in the application. Moreover, the applicant has to identify which parts of the parent application the claims of the divisional application are based on. The applicant also has to indicate in the parent application that a divisional or separated application has been filed. 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? There is no provision in the Danish law that would prevent filing a divisional application from another divisional application. 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? Generally, a divisional or separated application may be filed at any time as long as no final decision has been issued in respect of the parent application. 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? A divisional or separated application may be filed at any time as long as no final decision has been reached on the parent application, i.e. as long as the parent application has not yet been finally refused, been withdrawn, deemed withdrawn, or granted. In case of a refusal of the parent application, a divisional may still be filed during the time limit for filing an appeal against the decision to refuse. In case of a patent application being deemed withdrawn for failure to respond to an office action, a divisional application may still be filed during the time limit for revival of the parent application. According to Danish law, once the patent office has examined the patent application and when the patent application fulfils the requirements of the Danish patent law, the patent office notifies the applicant that it intends to grant the patent. After this notification, the claims of the patent application may no longer be amended so as to broaden the scope of protection. Similarly, a divisional application filed after the above notification has been issued in respect of the parent application may not relate to subject matter that at the time of filing of the divisional application could no longer have been included in the claims of the parent application. 2
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? There is no such provision under Danish law. 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? The subject matter of a divisional or separated application may not go beyond the content of the parent application. In particular, a divisional application, which is deemed filed on the date of filing of the parent application, may only be filed in respect of subject matter which was disclosed in the application documents on the date of filing of the parent 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? Under Danish law, it is not required that the subject matter of a divisional application was actually claimed in the parent application. However, a divisional application may only relate to subject matter disclosed in the parent application as filed. Furthermore, a divisional or separated application may only relate to subject matter that could have been introduced in the claims of the parent application at the time of the filing of the divisional application. 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? Since a divisional application is deemed filed on the filing date of the parent application, no extension of the term of the patent is achieved. However, filing of a separated application for subject matter introduced during prosecution of the parent application, the separated application is deemed filed on the date of filing of the newly introduced subject matter in the parent application. Consequently, the term of the separated application is extended compared to the parent application. 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? There is no provision in the Danish patent law that requires deletion of the subject matter sought protected in the divisional application from the parent application, except in cases of lack of unity. Double patenting is not explicitly prohibited by Danish law. 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? If a divisional application was filed in response to a restriction requirement, i.e. in cases where the parent application relates to more than one non unitary inventions, the applicant had to limit the claims of the parent application to a single inventive concept in the parent application irrespective of whether he/she files a divisional application. The applicant may further be required to remove any part of the description of the parent application that does not contribute to the understanding of the invention sough protected in the parent application. 3
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? If a parent application discloses more than one invention such that the requirements of unity of invention is not fulfilled, the possibility of filing a divisional may be the only way for an applicant to obtain protection for all the inventions disclosed in the parent application. Furthermore, irrespective of the question of unity, an applicant may have a legitimate interest of making one or more aspects or embodiments of an application subject of a separate application. For example, such separate protection may be useful in connection with an assignment or licensing of an aspect or embodiment of an invention. 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? For third parties, the possibility of filing divisional applications, continuation applications and continuation in part applications increases the burden of evaluating possible infringement risks in relation to pending patent applications, since not only the claimed invention of the application under consideration may have to be analysed but also possible further and even non unitary inventions that may be disclosed but not claimed in the patent application under consideration. 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? A patent system should provide a fair balance between the interests of applicants for and proprietors of patents, on one hand, and the interests of third parties, on the other hand. As divisional applications may be the only way for applicants to obtain patent protection for an invention, it is the opinion of the Danish Group that on balancing the above advantages and disadvantages divisional applications should be permissible. The Danish Group is of the opinion that the patent laws and practice should, as much as practically possible, prevent the filing of continuation applications (which, according to the definition put forward, relates to the same invention as claimed in a prior application ). It puts a big burden on third parties if filing of such continuation applications is permitted. Of course, if the applicant is not satisfied with a rejection, he has the possibility of filing an appeal. Generally, the Danish Group is of the opinion that it should not be permissible to file continuation in part applications outside the window of internal priority. It is our opinion that continuation in part applications (like separated ( udskilte ) applications according to the present Danish law) are to a large extent used to cure procedural faults made by patent applicants and attorneys and this possibility highly favours applicants and put an unreasonable burden on third parties, for example, in connection with Freedom of Operation analyses. Some US attorneys say that, in general, in the US, continuation in part applications are over used (and poorly understood) and as a result of this, it sometimes results in that the corresponding non US applications becomes invalid in countries which do not accept the continuation in part concept and/or because of an invalid priority claim. 4
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? The Danish Group is of the opinion that the filing of divisional applications should only be permissible if it is divided from a pending application. The Danish Group is against a limitation to only, say, 2 nd or 3 rd generation divisionals and, consequently, we accept the possibility of cascading divisional applications. Furthermore, we do not think it should be a prerequisite that the basic (original or parent) application is still pending when any divisional application in the cascade of applications is filed. A third party always has the possibility of judging which inventions are described in a patent application and a watch will show when applications on the various aspects are filed. However, it appears to be a practical problem that the question of new matter is judged differently in different countries in that, for example, the EPO appears to be stricter than USPTO and the USPTO appears to favour applicants too much, compared with third parties. Furthermore, filing a 2 nd generation divisional may be the only possibility for an applicant to obtain protection for an invention in case the patent office raises a new unity objection for the first time in respect of the 1 st generation divisional application. 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? Divisional applications should only be entitled to the filing date of the parent application, if their content does not go beyond the subject matter that is sufficiently disclosed in the parent application. 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? As appears indirectly from our answer above to item 3, our answer to these three sub questions are no, no and yes, respectively. 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? The Danish Group is of the opinion that it should not be permitted to add new matter. 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? The Danish Group is concerned about any undesired and inconvenient backlog, but limitation of applicant s rights to obtain protection for all their inventions is not the right remedy. In connection with any backlog, it is important that both applicants and third parties can request that specific applications are prosecuted fast and that the Patent Offices effect this efficiently. 5
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? Yes, this would increase usability of such databases, and it would increase legal certainty for third parties and reduce the burden of analysing potential infringement risks. National and Regional Groups are invited to make any additional comment concerning divisional, continuation and continuation in part applications which they find relevant. Summary The Danish Group refers to the rules in the Danish Patents Act in accordance with which divisional applications may be filed in respect of an invention disclosed in a parent application for which a final decision has not yet been issued. Danish law does not provide for continuation or continuation in part applications as such. However, in addition to filing divisional applications, though rarely used, Danish law provides the possibility of filing a so called separated ( udskilt ) application in respect of subject matter that was introduced into the files of a parent application during prosecution of the parent application. As far as harmonization is concerned, the Danish Group is of the opinion that there is no need for continuation applications and continuation in part applications, while the Danish Group is in favour of maintaining the possibility of filing divisional applications without undue restrictions. Résumé Le groupe danois se réfère au règlement en vertu de la législation danoise relatif aux brevets suivant laquelle les demandes divisionnaires peuvent être déposées dans le domaine d une invention décrite dans une demande parente pour laquelle il s applique qu une décision finale n est pas encore issue. La législation danoise ne prévoit pas le dépôt des demandes de brevet sous forme de Continuation or Continuation in Part Applications en soi. Cependant, en outre du dépôt des applications divisionnaires, bien que rarement utilisé, la législation danoise permet le dépôt d une demande soi disant séparée ( udskilt ) en vertu des biens sujets introduits dans les dossiers d une demande parente lors de la poursuite de la demande parente. En ce qui concerne harmonisation, le groupe danois est d avis qu il n y a pas besoin des demandes de brevet sous forme de Continuation or Continuation in Part Applications, tandis que le groupe danois favorise le maintien de la possibilité de déposer les demandes divisionnaires sans restrictions indues. Zusammenfassung Die dänische Gruppe bezieht sich auf die Regeln des Dänischen Patentgesetzes in Übereinstimmung mit welchen Teilanmeldungen in Bezug auf Erfindungen, die in einer früheren Anmeldung, für die noch keine endgültige Entscheidung ergangen ist, eingereicht werden können. Das dänische Recht sieht keine continuation und continuation in part Anmeldungen als solche vor. Allerdings erlaubt das dänische Recht die wenn auch selten benutzte Möglichkeit vor, eine so genannte ausgegliederte ( udskilt ) Anmeldung in Bezug auf Gegenstände, die während der Behandlung der früheren Anmeldung zu den Akten der früheren Anmeldung hinzugefügt wurde, einzureichen. In Bezug auf eine Harmonisierung ist die dänische Gruppe der Auffassung, dass für continuation und continuation in part Anmeldungen kein Bedarf besteht, während die dänische Gruppe die Beibehaltung der Möglichkeit, Teilanmeldungen ohne unnötige Beschränkungen einzureichen, befürwortet. 6