During the prosecution of a patent application, it often becomes necessary for the applicant to restrict and/or delete the scope and embodiments of claims to reduce costs, focus on the most valuable subject-matters, or overcome issues raised in an office action. In fact, even before starting to draft a patent application, there are already several decisions that need to be made by the applicant. Particularly, the selection of the scope and embodiments for the claims is arguably the most crucial step. Hence, it would be most beneficial for the applicant if the scope and embodiments were carefully selected at the outset of the application, and then, if any of them are compromised or deleted, a strategy may be devised how to regain or even broaden the embodiments that were not originally selected for the claims.
One approach is to file divisional applications. When it comes to divisional applications, the most important consideration is that of timing. According to Article 34, Paragraph 2 of the Patent Act, “A request for division shall be filed within any of the following time periods: 1. before a reexamination decision on the original patent application is rendered; or 2. within three (3) months after the date on which an approval decision for the original patent application or reexamination is served.” Basically, divisional applications can be filed at any time as long as the original patent application is still pending at the Intellectual Property Office of Taiwan or within three months after grant. However, no more chances to file divisional applications exist if the application is rejected during reexamination (final rejection).
Besides timing, another aspect to be considered would be the restriction to the contents to be filed in divisional applications. According to Article 34, Paragraph 4 of the Patent Act, “The divisional patent application shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) of the original patent application as filed.” In addition, according to Article 34, Paragraph 6 of the Patent Act, “For the divisional patent application filed in accordance with Subparagraph 2 of Paragraph 2, it shall be based on the invention(s) disclosed in the description or the drawing(s), but shall not be the same as that have been approved in the original patent application; the examination thereof that has been conducted before the original patent application is approved shall be resumed.” Accordingly, no new matter can be added into the specification or claims when filing divisional applications in Taiwan, unlike the cases for the continuation-in-part applications in the United States. Further, when filing divisional applications after grant, the claims for divisional applications shall not be the same as those that have been approved in the original patent application.
Bearing these provisions in mind, we can now turn back to the decisions that were made or are to be made by the applicant along the way of prosecution. Since it is crucial to decide whether and when to file divisional applications, to help make these decisions, we should get to know more about why to file divisional applications and the advantages associated with different filing strategies.
As a purely reactive strategy, the most straight-forward reason would be to avoid a final rejection and prolong pendency since according to Article 34, Paragraphs 4-5 of the Patent Act, the examination of divisional applications shall resume the completed examination procedure of the original patent application, or the examination that has been conducted before the original patent application is approved shall be resumed. Thus, generally speaking, there will be at least one more examination stage (i.e., at least one more office action instead of a final rejection) for divisional applications. Otherwise, the applicant would have to file an administrative appeal after the final rejection.
Secondly, if the patentability of one or more claims has been recognized by the examiner, the applicant may consider dividing claims that are not regarded as patentable into divisional applications to expedite the grant of the claims that were already found patentable. Reasons for denying patentability include not only unity issues, but also lack of novelty or inventive step, indefiniteness etc. In short, the applicant may treat the divisional mechanism as a pathway to expedite the prosecution or to avoid a final rejection.
As part of a proactive strategy on the other hand, since according to Article 34, Paragraph 3 of the Patent Act, the filing date of the divisional application shall be the same as the filing date of the original application (priority date also applies as long as a priority claim has been made), the applicant may be able to regain embodiments or subject-matters that are described in the specification but not originally recited in the claims due to cost or other concerns by dividing those contents into divisional applications. In such cases, the protection of patent rights could be broader and more complete, thus preventing competitors from developing the same technique or just designing around the granted claims. Similarly, the applicant may treat the divisional mechanism as a chance to expand the protection of the invention, both in the scope of the claims and the patent term.
Based on the foregoing, there evidently are multiple advantages to filing divisional applications in addition to simply overcoming unity issues raised in office actions. Most important of all, the applicant may simply file divisional applications in response to office actions in order to overcome any issues or expedite the grant, or proactively file divisional applications to regain unclaimed embodiments depending on cost considerations, competition and market potential. No matter what, the divisional mechanism is suitable for different prosecution strategies and may benefit applicants in numerous ways.
*Patent Attorney, Assistant Manager of International Patent Division at Tai E International Patent & Law Office
