To enable technical solutions in a patent application containing more than two ununified inventive concepts to be protected, the Chinese patent system provides divisional application. In addition to the lack of unity, the applicant may also take advantage of the divisional application by filing on his own initiative to realise a variety of application strategies. In 2019, CNIPA issued a revision to the Guidelines for Patent Examination; and, in 2022, the fourth revision of the Chinese Patent Law officially entered into force. Soon, the corresponding revisions of the Implementing Regulations of the Chinese Patent Law and Guidelines for Patent Examination are expected to be issued. Under this background, there will also be changes in relevant regulations and strategies for divisional application.
Submission time of a further divisional application
According to the provisions of Rule 42, paragraph one of the Implementing Regulations of the Chinese Patent Law, the applicant shall file a divisional application within two months from the date of receiving the notification to grant patent rights made by the Patent Office on the initial application. After the time limit expires, or the initial application has been rejected, withdrawn, or the initial application has been deemed withdrawn and the right is not restored, a divisional application is generally not allowed to be filed. That is to say, the applicant may file a divisional application in a case where the initial application is pending. This is before the notification to grant patent rights, decision of rejection, decision of re-examination upholding the decision of rejection, or judgment upholding the decision of re-examination of the initial application takes effect.
In a case where an examiner issues the notification to make a divisional application or raises a rejection of lacking unity in a divisional application, the applicant may file, according to the examiner’s opinions for unity, a further divisional application. The Guidelines for Patent Examination before the 2019 revision did not specify the examination standard on the submission time of a further divisional application. According to the Announcement (No. 328) on the revision of the Guidelines issued on September 23 2019, the submission time for a further divisional application shall be calculated on the previous divisional application with the defect of lacking unity. That is, if the previous divisional application is pending, a further divisional application may be filed according to the examiner’s opinions of lacking unity.
However, if the previous divisional application has been granted, or rejected, or has been withdrawn or deemed withdrawn and the right is not restored, a further divisional application cannot be filed.
If the examiner does not issue the notification to make a divisional application or raise a unity rejection in a divisional application, if the applicant hopes to file a further divisional application, the submission time shall still be calculated on the basis of the initial application. Therefore, in this case, the applicant can only file a further divisional application while the initial application is pending. If the initial application has been granted or rejected, a further divisional application cannot be filed based on the previous divisional application.
Imagine a case where the initial application has been granted or rejected, when the applicant hopes to file a further divisional application based on a previous one that has been filed based on the initial application. Can the applicant still file a further divisional application if there is not a defect of lacking unity with the claims of the previous divisional application, and the opportunity for making a voluntary amendment has been missed? The answer is that there is a certain possibility. When amending the claims of the previous divisional application, in the process of responding to an office action, filing a request for reexamination, or responding to a notification of reexamination, based on the examiner's opinions, the applicant may consider splitting the claims of the previous divisional application into two or more groups of claims that do not possess unity, to push the examiner to raise a rejection of lacking unity. Thereby, the applicant can file a further divisional application based on the previous divisional application that has been filed, before the previous divisional application is finally granted or rejected.
Applicants and inventors of divisional applications
The revision of the Guidelines for Patent Examination, issued on September 23, 2019, revised the provisions for the applicant and inventor of a divisional application.
According to the revisions, the applicant of a divisional application shall be the same as the applicant of the initial application when the divisional application is filed. And the applicant of a further divisional application based on a previous one shall be the same as the applicant of the previous divisional application.
When it is necessary to change the applicant, there are two ways. One may be to first go through the formalities to change the applicant of the initial application or the applicant of a previous divisional application on which a further divisional application is based. Then the changed applicant could file the divisional application or the further divisional application.
Another way may be to first file a divisional application by the applicant of the initial application, or file a further divisional application by the applicant of a previous divisional application, and then change the applicant of the divisional application or the applicant of the further divisional application. This revision avoids the situation of: "the applicant of the initial application cannot know a situation of his divisional application after the applicant is changed" prior to the revision of the Guidelines for Patent Examination in 2019.
It takes time to proceed from preparing the relevant documents to change the bibliographic data, to the CNIPA finally issuing the notification of passing examination on formalities. In practice, to file a divisional application as soon as possible, the second way (filing a divisional application first and then going through formalities to make a change in bibliographic data), is preferred.
The inventor of a divisional application shall be the inventor or one(s) of the inventors of the initial application. According to the revised provisions, the inventor of a further divisional application based on a previous divisional application, shall be the inventor or part of the inventors of the previous divisional application on which the further divisional application is based.
Divisional application of design
According to proposed revisions to the Implementing Regulations of the Chinese Patent Law from November 27, 2020, if an international application for a design includes more than two designs, the applicant may file a divisional application with the CNIPA within two months of publishing the international application in the International Bureau, and pay the fee.
The Revised Draft of Guidelines for Patent Examination issued on October 31 2022 specified the following provisions on a divisional application of an international application for a design involving The Hague Agreement.
Where one international application for a design includes two or more designs, the applicant may file a divisional application on his own initiative or according to the opinions of the examiner. The divisional application is regarded as a national application.
According to the provisions of Rule 141 of the Implementing Regulations of the Chinese Patent Law, an applicant who files a divisional application on his own initiative shall file the divisional application within two months from the date of publication of the international application for a design in the International Bureau.
Where the applicant files a divisional application according to the opinions of the examiner, the applicant shall file the divisional application no later than two months from the date of domestic announcement of the initial application. After the above time limit expires, or the initial application has been rejected, or the initial application has been deemed withdrawn and the right is not restored, a divisional application is generally not allowed to be filed.
For a divisional application filed based on an international application for a design, the filing date and application number of the initial application shall be filed in the request for the divisional application. The filing date of the initial application shall be the international registration date of the initial application, and the application number of the initial application shall be the international registration number of the initial application. The divisional application shall be handled as a national application.
Although the above revisions have not been officially ratified yet, the stage of soliciting comments has ended, and it is believed that formal revised versions will be issued soon.
Possible risks
In a case where one application includes more than two invention-creations, in order to protect the interests of the applicant, they can file a divisional application on their own initiative. They can also do this passively, filing a separate patent application for an invention-creation that has been disclosed in the initial documents but cannot be protected due to unity, while keeping the filing date of the initial application. The Implementing Regulations of the Chinese Patent Law and the Guidelines for Patent Examination provide the examination standard on a divisional application. Specifically:
One application includes "more than two" inventions, utility models or designs; and
The claims of the initial application after the filing of the divisional application and the claims of the divisional application shall seek protection for "different inventions" respectively.
Thus the claims of the divisional application should not possess unity with the claims of the initial application after the filing of the divisional application.
Therefore, unless the initial application contains two or more inventions, if the applicant files a divisional application only by amending or adding a technical feature that does not contribute to inventiveness, the examiner could issue the ‘notification that divisional application deemed not to have been filed’. Compared with an application for a patent for invention, this risk is higher if the initial application is an application for a patent for utility model. An applicant shall pay special attention to this risk when filing a divisional application for utility models on their own initiative.
