February 8, 2023

Volume XIII, Number 39

Advertisement

February 08, 2023

Subscribe to Latest Legal News and Analysis

February 07, 2023

Subscribe to Latest Legal News and Analysis

February 06, 2023

Subscribe to Latest Legal News and Analysis
Advertisement

Understanding Chinese Voluntary Divisional Application Patent Practice

For many parts of the world, a voluntary divisional application (known as a continuation application in the U.S.) may be filed at any time during the pendency of any parent application.  The claims in the voluntary divisional application must be supported by the original specification and cannot introduce any new matter.  Applicants often file one patent application at a time, and upon allowance, file a voluntary divisional application to pursue alternative subject matter disclosed in the original application.  In this manner, serial applications can be filed until the patentable subject matter disclosed in the original application is exhausted or the application expires (subject to any term limitations, which in the U.S. is 20 years from the filing date of the earliest non-provisional priority application).

In certain jurisdictions, including China, voluntary divisional application practice departs from this standard.  In China, voluntary divisional applications can only be filed during pendency of the first-filed Chinese parent application.  Once the first-filed Chinese parent application issues or is abandoned, voluntary divisional applications can no longer be filed.  In other words, a voluntary Chinese divisional application can be filed up until any the following time periods, in which the first-filed Chinese parent application is considered to be pending:

1) within 2 months from the deemed date of receipt of a notice of allowance,

2) within 3 months from the deemed date of receipt of a notice of final rejection,

3) during reexamination proceedings, or

4) during the administrative litigation proceedings such as an appeal of a reexamination decision to the Beijing IP Court.

Once the first-filed Chinese parent application is no longer pending, but a divisional application in the family is still pending, another divisional application can still be filed but is limited in scope to claims previously restricted under a lack of unity objection.  What this means is that before the first-filed Chinese parent application loses pendency, at least all potential independent claims should be filed in one divisional application to encourage the examiner to issue a lack of unity objection.  Thereafter, serial divisional applications may be filed based on claims that were subject to the lack of unity objection.  Hence, an important strategy consideration in China is to file all potentially viable claims before the first-filed Chinese parent application loses pendency.

©1994-2023 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume XI, Number 41
Advertisement
Advertisement
Advertisement

About this Author

Andrew Skale, Mintz Levin Law Firm, San Diego and Los Angeles, Intellectual Property and Litigation Law Attorney
Member

Andrew’s practice is focused on litigation involving patents, trademarks, and copyrights along with handling issues with entertainment law. In addition, Andrew has prosecuted hundreds of patents and trademarks before the US Patent and Trademark Office.

Andrew is frequently sought after for his legal expertise. He has appeared on CNBC’s Squawk Box and has been featured on KCEO radio as a commentator on intellectual property law. He served as an expert witness on trademark law in California state court and has spoken at the University of...

858-314-1506
Justin Leisey Patent Lawyer Mintz
Associate

Justin is a registered patent attorney with a background in chemical engineering. He drafts and prosecutes US and foreign patent applications for clients in a variety of industries, including the life sciences, biotechnology, medtech, pharmaceuticals, energy and sustainability, cleantech, manufacturing, and technology sectors.

Justin regularly conducts patent searches and drafts invalidity/infringement and patentability opinions, assesses risks associated with freedom-to-operate issues, drafts landscape analyses and competitive intelligence...

858.314.1498
Advertisement
Advertisement
Advertisement