A single application may contain several inventions. Divisional applications allow an applicant to separate those inventions and pursue patent protection for them individually.
A divisional application is not simply a process of dividing a patent and re-applying, but is an important system used to solve problems that arise during the examination process or to redesign the scope of rights in line with business strategy.
In this article, we will look at what a patent divisional application is, why it is needed, when it is possible, and what effects and ways to use it.
What is a patent divisional application?
A divisional patent application refers to a system in which part of an invention included in one patent application is divided into a separate patent application and reapplied.
For example, if an application contains several independent technical ideas, some of them can be separated and filed as separate applications.
The biggest characteristic is that if a divisional application is filed legally, the filing date of the original application is recognized as is, even though it is a new application. In other words, the application date, which is the basis for determining patent requirements or the duration of rights, is applied based on the original application date.
Why is a divisional patent application necessary?
① In order to meet the requirements for unity
Patent applications must meet the ‘unity requirement’.
The unity requirement is the principle that inventions included in one patent application must be connected by a common technical concept.
For example, if two or more independent inventions that are not closely related to each other are listed together in one application, grounds for rejection may be notified during the examination process on the grounds that the requirements for unity are not met.
In this case, the grounds for rejection can be resolved through a divisional application that separates some inventions into separate applications.
② In case of redesigning the rights securing strategy
Divisional applications are not limited to a system to resolve the unity requirement.
In practice, there are cases where it is judged more advantageous to protect a specific technology separately during the process of review or commercialization.
In this case, using a divisional application can help you build a more strategic patent portfolio by allowing you to further consider securing new rights while maintaining the rights of the existing application.
When is it possible to file a divisional patent application?
Divisional applications cannot be filed freely at any time.
The Patent Act allows divisional applications only during a certain period of time, and the representative periods are as follows.
- During a period when amendment is permitted under Article 47(1) of the Patent Act
- Within 3 months from the date of receipt of a certified copy of the patent rejection decision
- Within three months after service of a certified copy of the decision to grant a patent or a trial decision revoking a refusal
(If the patent is registered earlier, the divisional application must be filed before registration.)
Divisional applications may no longer proceed if the deadline is missed, so it is important to accurately manage the examination process and schedule.
How does a divisional patent application proceed?
To file a divisional application, the original application that is the subject of division must be clearly stated in the divisional application, and the specification, claims, drawings, and abstract must also be submitted.
Additionally, since it is treated as a new application, necessary procedures such as application fees must be completed separately.
However, just because it is a divisional application does not mean that new content can be freely added.
It should be noted that a divisional application is only possible within the scope of the matters described in the specification or drawings first attached to the original application.
What are the effects of filing a divisional patent application?
If a divisional application is legally filed, it is treated as a patent application independent of the original application.
Therefore, even if the original application is later registered, rejected, withdrawn, or invalidated, the divisional application will be subject to separate examination.
In addition, since the validity of a divisional application is recognized based on the filing date of the original application, the timing of determining patent requirements such as novelty or inventive step and the standards for the duration of patent rights are also applied based on the original filing date.
However, if a request for examination is not filed simultaneously with the application, the period for requesting examination is calculated based on the original filing date, so care must be taken not to miss the relevant deadline.
How can a divisional patent application be used?
1. You can continue securing your rights while resolving the reasons for rejection.
Even if reasons for rejection related to the unity requirement are notified, there is no need to abandon all inventions. If some inventions are separated into divisional applications, the original application can continue to be examined, and the separated inventions can be separately reviewed for patenting.
2. The technology described in the original specification can be utilized more broadly.
If there is technical content that was not included in the claims at the time of application but was described in the detailed description of the invention, it can be considered for rights by forming a new claim through a divisional application.
Of course, this is only possible within the scope stated in the initial specification.
3. Helps build your patent portfolio.
Divisional applications are also used as a strategy to protect one technology in multiple ways.
For example, a strategy of gradually expanding the scope of rights is possible by filing an additional divisional application based on the initial application and then filing a new divisional application based on the divisional application.
Through this, you can build a patent portfolio that systematically protects core technologies, detailed technologies, and application technologies.
A divisional application is not simply a process of dividing one application into several.
It is an important system that can be used to not only resolve reasons for rejection that arise during the examination process, but also to redesign the scope of rights and strengthen the patent portfolio in accordance with changes in the business environment.
However, a divisional application can only be filed within the period stipulated by law, and new content beyond the scope described in the original application cannot be added, so it is most important to strategically prepare the specification from the initial application stage.
If you would like to increase the possibility of utilizing existing patents and consider a strategy for securing broader rights through divisional applications, please consult with an experienced expert and design an appropriate direction.
This article reflects the information available when it was published. Contact us to discuss your circumstances.