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IPO PRACTICE ON DIVISIONAL PATENT APPLICATIONS
Article 32 of the Patent Law provides that where a patent application covers two or more inventions, the applicant may, at the direction of the Intellectual Property Office (IPO) or of his (or her) own accord, divide the application into separate applications (divisional application). Article 68 of the Patent Law further provides that where a patent already granted covers two or more or inventions, the patentee may apply to have it divided into separate patents. The IPO recently gave the following explanation of its criterion for allowing the division of a patent application and that of a granted patent:
In the case of a pending patent application, a divisional application is not limited to the situation under which two or more inventions are covered in the claims of the original application, but may extend to any other invention described in the original specification and drawings. In other words, if the various inventions claimed in the parent application and the divisional patent application have been disclosed in the specification and drawings (including the amended specification and the drawings) of the original application, a divisional application should be accepted.
Also, where a part of the original claims deleted by an amendment is still disclosed in the amended specification and drawings of the original application, the applicant may further request division in respect of that part. Therefore, if a divisional application does not meet the criteria for division, it should not be accepted. Where the original application is amended and the applicant made no statement of intent to delete the invention claimed in the divisional application, the applicant may still assert in the original application the invention covered in the divisional application through amendment procedure.
Division of a patent under Article 68 of the Patent Law differs somewhat from division of a patent application. Division of a granted patent is allowed where the granted claims cover two or more inventions. A patentee may not apply for division with respect to other inventions only disclosed in the specification or drawings but not in the claims. Also, where a division of a granted patent is dismissed on the grounds that it would change the substantive content of the patent, the original patent remains valid. Therefore, the claims as originally granted remains in effect without further application from the patentee.
Application may be made to further divide a divisional application. Under such circumstances, the substantive examination of the divisional application after the further division should be based on the filing date of the original application before further division.