China: Introduction To Strategic Handling Of Divisional Applications

Last Updated: 3 January 2018
Article by AFD China Intellectual Property

The division application system is designed for the situation where a patent application contains more than one inventions/utility models/designs. The applicant may submit divisional application(s) based on the initial application to have each application represent only a single invention concept.

In this article, we will go over the basic information of the divisional application system so as to allowing you to make full use of the system when needed.

Why apply for a divisional application?

The patent applicant, if wishes to seek protection for the contents in the initial application or the contents to which patent right is not granted in the initial application, may, before the expiration of the prescribed period of time, file a divisional application on the aforesaid contents. Contents to which patent right is not granted can be the claims pointed out by the examiner as lacking unity, or the claims not accepted by the examiner in the initial application. By filing a divisional application, such claims can have another chance for examination.

For a divisional application based on the initial application, the initial application date may be retained and the priority date may be retained if priority has been claimed. That is to say, the application date of a divisional application generally is consistent with the initial application. The filing date of the initial application is the start of protection of patent right after the divisional application is granted; and if priority is claimed, the cut-off date for examination of novelty and inventiveness in the substantial examination should be in accord with the priority date of the initial application.

What are the general requirements for filing a divisional application?

(1) The divisional application may not change the type as filed by the initial application.

(2) The filing number and the date of filing of the initial application shall be indicated in the filing request of the divisional application.

(3) The divisional application does not go beyond the scope of disclosure contained in the initial application.

(4) The divisional application shall be filed in the prescribed time limit.

When can a divisional application be filed?

Pursuant to the provisions of the Guidelines for Patent Examination, the applicant shall file the divisional application within two months from the receipt date of the notification to grant the patent right to the initial application (i.e. the time limit for responding to the notification and completing the formalities for granting). For the initial application that the examiner has issued a rejection, the applicant may submit a divisional application within three months from the receipt date of the decision rejecting the initial application, regardless of whether an application of reexamination for challenging the rejection is filed; the applicant also may file a divisional application after the request for reexamination is made or during the administrative lawsuit if not satisfied with the decision of the reexamination.

In fact, as long as an initial patent application is still pending / no final decision has taken effect, the applicant may initiate a divisional application based on it. Accordingly, applicants who wish for a fast grant of patent right and a full scope of protection may consider adopting such a prosecution manner that he can narrow the scope of protection as far as to obtain the grant of the patent right for the initial application, and file a divisional application for the contents which were discarded previously. Once granted with patent right, the divisional application will have the same effect as the initial application.

Further divisional applications

Further or cascading divisional patent applications are allowed in China on some certain occasions.

Pursuant to the provisions of the Guidelines for Patent Examination, where the applicant needs to file a further divisional application based on a divisional application, the time limits for filing of the further divisional application shall be calculated from the initial application, which is explained in the above section. If the time limits cannot be met, the further divisional application shall not be allowed, except in the situation that the divisional application on which the further divisional application will base lacks unity and the further divisional application is filed upon the examiner's opinion.

That is to say, in general, if the time limit for filing a divisional application for the initial application has passed, filing further divisional application(s) also shall not be allowed. However where the examiner, in the examination of a divisional application, points out unity problem in the divisional application in an Office Action or issues the Notification of Filing Divisional Application(s), the applicant can file an further divisional application based on the such notifications.

Furthermore, in practice, the time for filing the additional divisional application is in accord with the time limit for responding the notification, although it is not explicitly stipulated in relevant law and regulations.

It is suggested that the applicant, when filing a divisional application, seek for protection of the scope as broad as desired and consider the possibility or necessity of filing further divisional application(s) to try to secure the coverage. Where the applicant thinks of filing further divisional application(s), it is advised that he includes claim(s) having obvious unity problem so as to reserve an opportunity of it being pointed out by the examiner and thus to have the chance to file further divisional application(s).

http://afdip.com/index.php?ac=article&at=read&did=3132

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions