The divisional patent, a useful and little-known tool that a patent owner has to modify, spontaneously or upon request by the Office, a previously filed application, without excessively narrowing the scope of protection.
What does divisional patent mean?
When preparing the drafting of a patent application, one of the main difficulties that the applicant – inventor or appointed agent – must face is defining the scope and extent of the invention's protection. In other words, determining how broad the protection of the invention should be, whether it concerns a product, a process, or both.
In fact, by narrowing the field too much, for example by claiming only the fundamental inventive aspects of a finding, there is a risk of having insufficient protection, unable to offer protection against, for example, alternative embodiments and/or recent technological developments not hypothesized at the time of filing.
Conversely, a very frequent case, especially when the real extent of the invention is not yet well-defined and elaborated, is the preference to file a very broad application, with the risk, however, of contravening one of the fundamental principles of patenting, namely the requirement of unity of invention.
A solution to this latter case is the filing, subsequent to the presentation of the original application, of one or more divisional patent applications, i.e., applications that individually protect each invention previously claimed in the original document, so as to satisfy the requirement of unity of invention. This faculty can be exercised spontaneously by the applicant or upon formal request from the Patent Office.
In today's article, we will therefore focus on the divisional patent, providing a definition, explaining how it works, and evaluating its application. Throughout the discussion, we will show the characteristics of the divisional patent at the national, European, and US levels, analyzing common points and differences.
The Italian divisional patent (UIBM)
In the Italian legal system, the request for a divisional patent, without prejudice to the common provisions regarding patents for invention, is regulated by Art. 161 c.p.i. (Codice della Proprietà Industriale – Industrial Property Code), which deals with the unity of invention and the division of the application.
As already mentioned, a patent application for an invention cannot contain more than one invention within it. Should this circumstance occur (which is not infrequent), the UIBM (Ufficio Italiano Brevetti e Marchi – Italian Patent and Trademark Office) will invite the owner of the application, or their representative, such as an appointed agent, to limit the application to a single invention, also assigning a deadline to complete this operation.
The same article states that the interested party has the faculty, if they do not wish to excessively narrow the scope of protection by reworking the set of claims, to present as many divisional applications for each invention covered by the original application, which will take effect from the date of the original application.
The same faculty may also be exercised by the applicant spontaneously, that is, even in the absence of a formal invitation from the Office, no later than the date of grant of the patent derived from the original application.
In both cases, following the filing, the UIBM will check the divisional application to ensure that it does not contain new matter and/or does not claim an inventive concept different from the one originally requested.
In order to accelerate this procedure and simplify the task for the receiving Office, the applicant is advised to attach a communication/declaration to the new filing regarding the reasons for the filing and the presence of the required prerequisites.
The European divisional patent (EPO)
Let us now analyze how the topic of the divisional patent is handled by the EPO (European Patent Office).
In this case as well, the primary reason for filing a divisional patent application (European Divisional Application) lies in the fact that the original or parent application (Parent Application) does not satisfy the requirement of unity of invention.
Such a finding may be issued, for example, within a so-called search report, which the European Patent Office transmits to the owner within 18 months from the filing date. If the owner does not intend to limit the original application by narrowing its scope of protection, they may proceed to file one or more divisional patents.
A divisional application, however, may not, in any case, claim a broader scope of protection than that of the original application. If it satisfies this requirement, in addition to the formal filing requirements, the divisional patent will be assigned the same filing date and the same priority date as the original patent application.
Furthermore, all states designated in the original application, i.e., all states for which the owner requested protection during the first filing, may also be re-designated in the divisional application. Conversely, states not initially designated, or states whose designation was abandoned or lost effect during the granting procedure, cannot be designated in the divisional application either.
The European Patent Office regulations allow the filing of a divisional application with respect to any original application currently in the granting phase. The granting period extends from the filing date to the day before the publication of the mention of grant in the European Patent Bulletin, or from the filing date to the date on which the application is refused, abandoned, or deemed to be so. However, if the original patent application has been refused, the owner will have time to file one or more divisional applications until the end of the appeal period, regardless of whether an appeal has been filed.
Divisional applications can be filed directly in paper format at the EPO's operational offices, namely Munich, The Hague, or Berlin; or in electronic format, through the appropriate online filing platform. They must be filed in the procedural language of the original application. If the original application was not filed in one of the three procedural languages (German, English, or French), the divisional application may also be filed in the language of the original application, with the commitment to file a translation into one of the three procedural languages within two months of the filing date.
The filing of a divisional application must be accompanied by the payment, within prescribed limits, of appropriate fees (filing, search, grant, etc.), under penalty of refusal. If the search report issued on the divisional application is based, entirely or in part, on the search report associated with the original application, the owner is entitled to a total or partial refund of the costs incurred in paying the search fee.
If the divisional application is filed more than two years after the filing of the original application, the owner must pay the back renewal fees no later than four months from the filing date or within 10 months together with a late payment surcharge.
Once filed, each divisional patent application is considered a normal patent application in its own right.
The United States divisional patent
Unlike the national or regional regulations seen previously, the US Patent Office offers the owner of an invention different possibilities and types of patents comparable to the divisional patent. For example, for the protection of recent developments of an invention already claimed by a previously filed patent, or to cover different aspects of one's own invention.
In particular, these types of patents are called "continuation", "divisional", "continuation in part", and "reissue".
Continuation
A "continuation application" consists of a patent application filed by an owner with the intention of adding additional claims to a previously filed application (parent application), not yet granted or abandoned. The continuation application is based on the description of the original application, following it faithfully or, at least, not adding new matter that could broaden its scope. It claims the priority and priority date of the latter and must have at least one of the inventors in common with it.
This application is particularly requested when an examiner, during the drafting of a search report, grants only some of the originally filed claims, rejecting others, or when an owner realized they had not included all embodiments of the invention in the claims.
During the prosecution of a continuation application, the owner cannot, as already mentioned, add new matter to the description. In this case, they must file a "continuation in part application" (see below).
Divisional
A divisional application differs from a continuation application to the extent that it claims an invention distinct and independent from the original application, but derived from it. A divisional application claims the same priority as the original application and must, in this case as well, have at least one inventor in common with it. Similar to other legislations, filing a divisional application is often used, for example, following a finding of lack of inventive unity.
Continuation in part
A "continuation in part application" or "CIP application" consists of a patent application derived from an original application, but characterized by the addition of new matter not previously described. In this case as well, however, the description reported in the original patent must be largely adopted and at least one inventor must be in common. The "CIP application" is useful for claiming technological developments of the finding subsequent to the first filing. Naturally, only claims regarding matter already disclosed in the original application can share its priority date; for totally new claims, the filing date of the "CIP application" will prevail.
Reissue
If a defect is found in a granted patent, the owner can surrender the title and file a "reissue" application to correct the defect. An example occurs when the claims of the granted patent assume a broader or narrower coverage than that to which the patent would be entitled. In the second case, for example, the owner can file a patent with expanded coverage ("broadening reissue"). However, they cannot add new specifications to the invention. A "reissue application" must be filed within four years from the grant date of the original patent.
Divisional patent: conclusions
In light of what has been illustrated above, we can conclude by stating that the divisional patent represents a useful and interesting opportunity, often little known or considered, that the owner has to modify their patent application as originally filed, both as a voluntary initiative and following a finding issued by the competent Office.
In the latter case, it may prove to be the only weapon the owner has to obtain patent protection for an invention without limiting its scope of protection in a restrictive way.