Divisional patent applications

In the applicant s response subsequent to the restriction requirement, an amended set of claims were filed where only one of the groups listed above was retained and the claims corresponding to the other groups canceled. The claims to the canceled subject matter were subsequently included in four separate divisional patent applications—the primary patent application eventually issued into US 6,939,578 and the four separately filed divisional applications issued into patents as well. 

Claim from first divisional patent application 1. A compound of formula I ... 

Claim from second divisional patent application. 

The proposed new regulations affect other things as well, including the number of continuations and divisional patent applications (not discussed herein) that are allowed. See Court Temporarily Halts New Patent Rules , Associated Press, October 31, 2007. Available at www.forbes.eom/feeds/ap/2007/10/31/ap4285576.html. 

Caneba, G. T, and Dar, Y., 2005. Eree-Radical Retrograde-Precipitation Copolymers and Process of Making the Same , U.S. Patent Application 10/045,725, and Divisional Patent Application, ll/181,481,Filed July 14. 

FIGURE 2.10 The first amended claim set in the nonprovisional patent application and the new claims to the canceled subject matter in two separate divisional application filings. 

Whether the applicant is filing an RCE, a continuation, or a divisional application, an important aspect to keep in mind is that the filing date of the first regular patent application in the chain sets the patent term clock ticking. This means that any of the patents that claim priority (continuations or divisional) from that original application will have their 20-year lifetime measured from the date on which the parent application was filed (absent special circumstances).42... 

If the patent application relates to more than one invention and the apphcant wishes to protect two or more inventions, the invention or inventions can be the subject of one or more divisional applications. The divisional application may be filed at any time before the grant of the parent application. A divisional application cannot be filed if the parent application has been withdrawn or is deemed to have been withdrawn. Lack of unity is not a cause of invalidity of a granted patent. 

In American practice, in an application for invention concerning compounds, only prodncts and methods of use claims are generally admitted by the examiners of the Patent Office. For a process for the manufacture of products, a divisional application is often reqnired. In all cases, the claims cannot extend more widely than the description, completed if appropriate with the drawings. 

All patents resulting from new applications, continuation applications, continuation-in-part applications, and divisional applications filed on or after June 8, 1995, have a... 

The 20-year patent term is likely to have its biggest impact in cases where a series of continuing applications are filed to obtain a patent, whether those continuing applications are continuation applications, continuation-in-part applications, or divisional applications. The scenario set forth in Table 20.1 illustrates the effect of GATT on patent term in a hypothetical case with several continuing applications. 

If the applicant is not successful in overcoming the examiner s rejections and the examiner makes the rejections final, several options remain. Again the applicant may simply abandon the application and, if the application has not been and will not be published, retain the invention as a trade secret. Or, the applicant can refile the application as a divisional, continuation, or continuation-in-part application and continue prosecution in the PTO. The applicant may also appeal the examiner s rejection to the Board of Patent Appeals and Interferences within PTO. If not satisfied with the Board s decision, the applicant may appeal that decision either to the Court of Appeals for the Federal Circuit based on the record before the PTO or to a federal district court for a de novo review. If the examiner s position is overturned, the Federal Circuit or the district court can order the PTO to issue the patent. Appeal to either the Federal Circuit or a federal district court destroys the secrecy of the application as well as that of the record of the proceedings within the PTO and thus destroys any trade secrets that may have been contained therein. 

Under the current system, an applicant may question whether even to file such divisional applications. If broad and adequate protection can be provided in the parent case, it appears that divisional applications may not be necessary. For example, if broad composition of matter claims can be obtained in the parent application, method of use claims presented in a divisional application may offer little additional protection and offer no additional patent term extension. Little additional protection is provided because the broad composition of matter claims will cover all uses of the compound, including a new use. In the event, however, that the composition of matter claims are later found to be invalid or unenforceable, the method of use claims could prove to be valid and enforceable. Thus, there are strong arguments that such divisional applications should be filed even under the current system. 

Before changes implemented under GATT, divisional applications potentially allowed the applicant to obtain several patents in series on the same basic concept and thereby extend patent protection beyond the 17-year term of the first patent to issue. This is no longer possible under the 20-year term. 

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