On several occasions, multiple inventions are covered by a
single patent application. Inclusion of multiple inventions, which
may be related to each other, in a single patent application, may
be done for strategic reasons. However, the patent law in most
countries allows claiming a single invention or a single inventive
concept in an application.
One of the important aspects of a patent application is that, it
should have "unity of
invention" i.e. a single patent application
should claim only one invention. In case a patent application
claims more than one invention, then the patent application may get
rejected during examination on the ground of lacking unity of
invention. Such rejection can be overcome by amending the patent
application (can be referred to as "parent application")
to claim a single invention. The additional inventions that were
previously claimed or covered by the patent application can be
claimed by filing "divisional
application(s)". Apart from filing a divisional
application as a remedy to a rejection by a patent examiner, a
divisional application can be filed voluntarily by the
A divisional application allows an applicant to divide one of
the inventions from the parent application into a new complete
application without losing his priority rights. Term of
the divisional application is 20 years from the date
of filing of the parent application.
A divisional application is considered as a substantive
application, and therefore separate fee has to be paid for its
filing. Further, as it is examined separately, a request for
examination must be made. A divisional application should be
accompanied by a complete specification and should not include any
matter not in substance disclosed in the parent application.
Further, the divisional application should not include a claim for
any matter that is claimed in the parent application or any other
divisional application (L.G Electronics, Inc, Korean
Corporation Vs. The Controller of Patents & Designs et.
al.). It shall be noted that a divisional application can be
filed at any time before the grant of the patent, and one must be
the applicant of the parent application to file a divisional
In some jurisdictions, a divisional application may arise from
another divisional application. However, in India, all divisional
application should arise from the parent application and should be
filed before the grant of the patent application.
Including subject matter related to multiple related inventive
concepts in a single patent application can be a good strategy in
some scenarios. Such a strategy may help a patent applicant in
postponing the expenses involved in filing the patent application.
Further, the applicant, depending on the market feasibility of the
inventive concepts can choose how the patent application can be
divided into one or more divisional applications. However, an
attempt to use provisions relating to divisional applications to
reinstate claims of an abandoned application that may include a
single inventive concept may not work.
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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