China,  Proescution

China Divisional Practice

China allows the filing of divisional applications but under specific circumstances. Most importantly, divisional applications can usually only be filed voluntarily during the prosecution of the original parent application. Once the parent application is granted or withdrawn, no additional voluntary divisional applications may be filed. However, divisionals can be filed to pursue subject matter not yet pursued due to a unity rejection raised by an examiner in an earlier application at any time regardless of the status of the parent application.

Timelines: When Must a Divisional Application Be Filed?

A divisional application can be filed :

  1. at any time during the pendency of the parent application, which means before the parent application is granted or finally rejected and withdrawn. The deadlines are shown below:
    • 2 months after the Decision to Grant is issued (i.e. deadline for grant fee payment)
    • 3 months after a Decision of Rejection is issued (if re-exam is not pursued)
    • 3 months after a Re-examination Decision rejecting the claims is issued (if judicial review is not pursued)
    • 2 months after a Decision is issued by the Beijing IP Court upholding the Re-exam Decision (if appeal of Beijing IP Court Decision is not pursued)
  2. at any time before the grant of the original parent or its divisional application if unity rejection was raised by the examiner.

Under What Circumstances can Divisional Applications be Filed?

During the pendency of the parent application, applicant may voluntarily initiate the filing of any number of divisional “child” applications, provided that the claim scope does not add new matter or go beyond what was disclosed in the originally filed specification.

After the deadlines described in the above section, an applicant can only file another divisional “grandchild” application upon a divisional “child” application if the Examiner had pointed out unity issues in the prior child application.

Divisional Strategy A: Keeping the Parent Application Pending

If the applicant wishes to preserve the flexibility of filing voluntary divisional applications, the best strategy is to keep the parent application pending for as long as possible. This can be done by pursuing the most difficult-to obtain claims first (e.g., broadest claims) while pursuing easier-to-obtain, narrower claims in one or more divisional applications. This strategy lengthens the timeframe in which additional divisionals may be filed while also delaying large upfront costs associated with having to file all potential divisionals at once after the grant of the parent application.

There are many mechanisms which can be used to slow down prosecution in the parent application, including maximizing deadlines, taking extensions, using the right combination of amendments and arguments to progress in prosecution without leading to a final rejection, and appealing to the Patent Re-examination Board. This strategy at least “buys time” for the client to develop his or her business in order to make a more informed decision regarding which divisionals need to be filed before the parent application eventually grants.

One potential risk of using this strategy is that a divisional application is not necessarily examined by the same examiner as the parent application. Therefore, if during prosecution of the parent application some claims have already been deemed allowed, it may be safer to let those claims to pass to issue versus cancelling them and pursuing them in a divisional application (possibly with another examiner). There is no guarantee that the new examiner will also allow the same claims during prosecution of the divisional application.

Divisional Strategy B: Pursue Quick Allowance of the Parent

If flexibility is not required because the claim scope is straightforward and the applicant already knows exactly what subject matter the applicant wishes to pursue, then pursuing allowable claims in the parent application is a faster and more efficient strategy. Upon allowance of claims in the parent application, applicant would simply evaluate which remaining claims the applicant wishes to pursue, and then file the appropriate number of divisional applications to cover the scope of the desired subject matter. If no further unity rejections are issued by the Examiner, these remaining child applications will issue or be rejected, and then examination on the subject matter described in the originally filed application will be completely concluded.

Conclusion

There are many different strategies that can be taken depending on the timelines, business needs, and budget of a particular applicant. The most important thing is to be aware of all the different options so that you can make the best informed decision each step of the way.

Jennifer Che, J.D. is Vice President and Principal at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.
eip@eipgroup.asia

This blog post is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

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