When should you file a Divisional Application(s)?

31 Oct 2024

For patents, a divisional application stems from (or divided out of) an earlier, or "parent," patent application. Very often, nearing the grant stage of a patent application, your Patent Attorney would write to ask if you would like to file a divisional application. In most countries, any desired divisional application(s) should be filed before the “parent” application is granted. Let us consider why an Applicant should consider filing a divisional application.

No Allowable Claims

This is a rather common strategy that Applicants utilize when their earlier patent application has been objected for patentability issues (i.e. none of the claims have been found to be novel and/or inventive). While some countries allow an appeal or continued examination, such routes could end up costly. In such cases, the Applicants could usually file a divisional application to restart the examination process, or to wait for corresponding application(s) to be allowed.

Addressing “Lack of Unity” Rejections raised by an Examiner

One of the key reasons for filing a divisional application is when an Examiner raises a lack of unity rejection. In most countries, a single patent application can only cover one invention. Should the Examiner find that the “parent” application comprises more than one, distinct inventions, the applicant would be required to elect one group of invention to proceed with the examination. Hence, if an Applicant wishes to pursue the other groups of invention, one or more divisional application(s) must be filed.

Different aspects of an invention…

Filing a divisional application allows an Applicant to protect distinct aspects of their invention separately. For example, an invention may comprise a product and a process to manufacture the product and/or a method related thereto. In such case, an Applicant may choose to file the product claims in the “parent” application, and the method or process claims in a divisional application. This allows Applicants to obtain protection for these different aspects of an invention, without having to file fresh patent applications.

Licensing and Litigation Strategy

As described above, divisional applications can cover different aspects of an invention. In the event the “parent” application is invalidated, the divisional claims may still stand and offer continued protection to the Applicant. Moreover, with the divisional application pending, the Applicant has some sort of flexibility in amending the scope of the claims. This could be useful when a third party infringes the “parent” patent. The claims of the divisional application could then be amended to capture the alleged infringer’s product or process. Further, having multiple patents arising from a single invention may also potentially strengthen an Applicant's position during negotiations with other parties for licensing the patent.

Broadening or varying the Scope of Protection

There are also instances where Applicants file divisional applications to pursue broader claims than those included in the parent application, while the “parent” application is allowed to grant on a narrower scope of claims. This allows the Applicants to file divisional application(s) with broader claims that may cover variations or improvements made after the filing of the “parent” application. Of course, such variations or improvements must have already been disclosed in the ”parent” application.

Final Words

With these in mind, do think twice before instructing your Patent Attorneys to simply pay the grant fees before filing any desired divisional application(s). As described above, there are advantages to filing divisional applications. Moreover, different Patent Offices may have different requirements for filing divisional applications. One should not assume that the requirements are the same for every country.