In New Zealand (and in many other countries) it is possible to
file divisional patent applications. Generally in most cases this
must be done before an application is accepted for grant.
The usual reason for filing divisional applications is that
patent specifications can contain discussions on two or more
inventions and separate protection is required for each. In the
language of patent law, you must have unity of invention per patent
Sometimes when we are preparing patent applications the
applicant is uncertain as to which aspect of the invention is the
most important. Therefore the applications are often drafted to
allow the possibility for dividing out at a later stage –
this being a more cost effective approach than filing individual
Filing individual applications gives you greater flexibility as
if a client decides to drop one aspect of an invention and proceed
with another you can re-file a separate application for the dropped
aspect. If two or more inventions are in one patent specification,
then you are committed to the same priority date and making
decisions with respect to all of the inventions at the same
There is another reason for filing divisional applications. If a
parent application is opposed, it is possible that a divisional
application may still be in the examination process. This
divisional could be amended to overcome deficiencies in the parent
application, or claim alternate subject matter.
While a parent application can be amended after acceptance, the
rules regarding this are very strict – for example,
different subject matter cannot be claimed and only a narrowing of
existing claims is permitted.
The tactic of filing divisional applications should be
A client has a very important invention and they wish to file a
divisional as insurance; and,
There is additional material within the parent specification
that is worth claiming in the divisional.
The last point is quite important. This is because if the
original patent application is overturned because the claimed
invention is not considered to be novel or inventive, then the
divisional will likewise be similarly affected – unless
the patent specification has fair basis that enables a different
invention to be claimed.
Patent attorneys specialise in intellectual property strategy
and can work the legal system to client's advantage –
provided we know what they want to achieve.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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