Using divisional applications to save a patent

In Taiwan, the invention patent divisional application system provides a remedy to settle the scope of patent protection during an application and gives applicants the flexibility and freedom to plan and organise a favourable patent application strategy.        

According to Article 33 of the Patent Act, an invention patent application shall relate to one invention. However, two or more inventions belonging to a single general inventive concept may be filed in one application. A patent application that contains two or more subtantial inventions that fail to satisfy Article 33 of the act may be divided into two or more divisional patent applications on notice by the Taiwan IP Office (TIPO) or at the applicant's request. The type of divisional patent application should be the same as that of the original patent application – that is, if the original patent application was an invention patent application, the divisional patent application should also be an invention patent application. The applicant must file a request for patent conversion if it wishes to change the type of divisional patent application to a utility model. The description, claims or drawings of the divisional patent application should not exceed the disclosure of the original patent application as filed. Thus, without addition of new matter, the applicant can amend existing content or add content and new claims to the divisional patent application to overcome prior art cited in the original patent application in order to obtain a more favourable and complete protection scope for the invention. Further, under Article 33 the inventors of the divisional patent application should be the same or some of the same inventors of the original patent application. New inventors cannot be added to the divisional patent application. The applicant of the divisional patent application should also be the same as that of the original patent application. If both applicants are different, the applicant of the original patent application can file an application to transfer ownership of the divisional patent application to the applicant of the divisional patent application.

According to Article 34 of the Patent Act, a request for division shall be filed either:

• before a re-examination decision on the original patent application has been made; or
• within 30 days of service of the approval decision for the original patent application.

In the first case above, the divisional patent application must be filed while the original patent application is still legally bound to TIPO. Therefore, if a preliminary decision to reject the original patent application has been served, the applicant must file a re-examination request by paying an examination fee for the original patent application  in order to keep the original patent application under TIPO's jurisdiction. Further, according to Article 34 the examination of the divisional patent application will resume the completed examination procedure of the original patent application, so the applicant should file a re-examination request for the divisional patent application and pay an examination fee when the divisional patent application is filed during the re-examination procedure of the original patent application. The applicant can retain the claim scope of the original patent application and provide a new claim scope with the divisional patent application. Thus, the applicant can ensure that the invention covers the correct patent scope. Due to cost considerations, if the applicant wishes to change the claim scope of the original patent application to overcome prior arts cited in an official TIPO examination communication, but does not do this through a divisional patent application channel, there is a risk that the original patent application will be subject to a final TIPO examination communication. In reply to the final TIPO examination communication, the changed claim scope of the original patent application will be subject to amendment limitations prescribed with the communication and can only be narrowed. If the response or the amendment of the original patent application fails to overcome the rejections set out in the final TIPO examination communication, a preliminary decision of rejection will be issued for the original patent application. The applicant must still file a re-examination request for the original patent application in order to pursue the issue of a patent. A re-examination request must also be made if a divisional patent application is to be filed. As a consequence, the costs and timeframe may not be reduced.

In addition, a request for division will be rejected if the original patent application has already been withdrawn or abandoned. When a preliminary decision to reject the original patent application is served, in order to keep within the statutory timeframe the divisional patent application should be filed together with a re-examination request for the original patent application, or as soon as possible before a re-examination decision on the original patent application is issued. In such case, the divisional patent application should also include a re-examination request and the re-examination fee. However, the applicant can file a divisional application before a preliminary decision to reject the original patent application without paying the re-examination fee for the divisional application. The applicant must consider the timing carefully in light of factors such as costs, the prosecution timeframe and favourable patent protection scope.