I. Related Laws:

Article 31 Paragraph 1 of the "Patent Law of the People's Republic of China" (2020 revision): "An application for a patent for invention or utility model shall be limited to one invention or utility model. Two or more inventions or utility models belonging to a single general inventive concept may be filed as one application".

Rule 42 Paragraph 1 of the "Implementation Regulations of the Patent Law of the People's Republic of China" (2010 revision): "Where an application for a patent contains two or more inventions, utility models or designs, the applicant may, before the expiration of the time limit provided for in Rule 54, paragraph one of these Implementing Regulations, submit to the patent administration department under the State Council a divisional application".

II. Introduction:

In some academic circles, people believe that the filing of divisional applications should be based on the unity stipulated in Article 31 of the Patent Law, and the legislative intention of unity is to facilitate the classification, search and examination of patent applications, and also economic considerations. However, in practice, the number of divisional applications filed for the unity issue occupies a minority, and most divisional applications are submitted by applicants within the prescribed time limit. These divisional applications submitted by applicants on their own initiative and not for overcoming the unity defects of the initial application can be called "special divisional applications".

Moreover, it can be seen from the first paragraph of Article 42 of the aforementioned implementing regulations that "an application for a patent contains two or more inventions" can meet the requirements for filing a divisional application without judging whether these inventions belong to a general inventive idea, that is, whether there is a problem of unity. Therefore, it is clear that the current patent regulations in China do not exclude "special divisional applications." Of course, applicants should submit a divisional application based on actual needs, and should not maliciously use these rules in a way that would waste national administrative resources.

III. Types and Suggestions:

Applicants submit a "special divisional application" usually for the following considerations:

1. The scope of protection of the claims granted in the initial application is too small or restricts inappropriate features:

When responding to the office actions of the initial application, applicants may amend the claims to a smaller scope or add unnecessary features to the claims due to reasons such as short response time or incomplete consideration. Such a claim makes it easy for competitors to bypass the scope of protection of the patent, and cannot protect the legitimate interests of the patentee.

In these cases, applicants may consider submitting a divisional application within the prescribed time limit.

According to the first paragraph of Rule 43 of the "Implementation Regulations of the Patent Law of the People's Republic of China" (2010 revision): "A divisional application filed in accordance with the provisions of Rule 42 of these Implementing Regulations shall be entitled to the filing date and, if priority is claimed, the priority date of the initial application, provided that the divisional application does not go beyond the scope of disclosure contained in the initial application".

The scope of protection of the claims of a divisional application may be greater than that of the initial application, but the new scope of protection shall not exceed the scope of the initial application.

For issues that the examiner has highlighted in the initial application, such as lack of novelty or inventive step, applicants should consider whether the same problems exist in the new claims of the divisional application. If these problems are caused by the examiner's misconceptions, applicants should prepare reasonable arguments or supplementary evidence.

Although the scope of protection of a divisional application shall not exceed the scope recorded in the initial application, based on the content recorded in the initial application, applicants can still submit corresponding supplementary experimental data in the opinion statement for the examiner's reference.

2. The scope of protection of the claims granted in the initial application is too large:

The protection scope of the claims is not the larger the better, while the stability of the patent right must be considered, that is, the risk of being invalidated.

The author dealt with an invalid case, which was eventually invalidated. Although there was actually an essential difference between the invention content of the target patent and the invalid evidence (the micron-level particle size range vs. the nano-level particle size range), unfortunately, only the feature "granular" was defined in the claims of the target patent. As there was no restriction on the particle size range, the target patent could not be distinguished from invalid evidence in the protection scope of the claims.

In the previous stage of substantive examination, the target patent was granted, since the examiner did not find this invalid evidence. Subsequently, the patent was challenged by a request for invalidation. However, since the content of the description was not allowed to be added to the claims at the invalidation stage, the ultimate protection scope was too large and the target patent was completely invalidated.

If the applicant could submit a divisional application after the initial application was granted, and add other features, such as particle size range, in the claims of the divisional application to make further restrictions, then the divisional application would still protect the legitimate rights and interests of the applicant. Such protection would be available even if the patent right of the initial application was invalidated.

Using this as a guide, if the initial application is granted in a larger scope of protection, applicants should check whether the dependent claims define different levels of reasonable scope in order to deal with the possible subsequent invalidation procedures. For important patents, applicants could consider submitting a divisional application, based on the specification of the initial application, to claim a more specific or limited scope of protection by other features.

3. Add new claims:

Except for the timing of voluntary amendments as stipulated in Rule 51, Paragraph 1 of the "Implementation Regulations of the Patent Law of the People's Republic of China" (2010 revision), applicants are generally not allowed to add new claims to the claims unless such additions are made to overcome the defects pointed out by the examiner.

Therefore, when the time for voluntary amendments is exceeded, if applicants wish to protect more technical solutions that were not claimed in the initial application, a divisional application can be submitted to that end. However, it also should be noted that the divisional application shall not exceed the scope of the initial application.

4. The initial application was finally rejected

After the initial application is finally rejected, applicants can file a request for reexamination or submit a divisional application within the prescribed time limit.

Some applicants file divisional applications in the hope that different substantive examiners will conduct the examination, and believe that the judgments of different examiners of the substantive examination may be different. However, the author does not recommend that divisional applications be filed for this purpose only.

If a divisional application is submitted, the examiner of the substantive examination of the divisional application will definitely refer to the examination opinions of the initial application. Unless the examiner of the substantive examination of the initial application made an error in fact finding, the examination opinions of the divisional application will usually not be contrary.

Moreover, if a request for reexamination is filed, the reexamination will be made by the reexamination panel (the collegiate group usually consists of 3 people, excluding the examiner of the substantive examination of the initial application), which can also reconsider the facts of the case and the reasons stated by the applicant. In addition, in the reexamination procedure, applicants may further amend the protection scope of the claims based on the description.

Additionally, applicants can also submit a divisional application within the prescribed time limit after receiving the reexamination decision. If applicants file an administrative litigation, they can also submit a divisional application in the litigation procedure.

5. Extend the approval time:

A divisional application can further extend the final approval time of the relevant technical solutions, making it difficult for competitors to judge their legal status. Moreover, for technical solutions that continue to invest in research and development, divisional applications are also allow the applicant to make adaptive adjustments to the claimed technical solutions.

From the above points, it can be seen that submitting a divisional application can be an effective means to compensate for the rights and interests of an applicant. For important patent applications, applicants may consider actively and strategically filing divisional applications.

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.