Patent attorney
Tongli Juncheng, Director of the Second Electrical and Intellectual Property Department
Practice areas
Communications/Computer/Automation/Mechanical Wait
In this issue, I want to talk to you about "dividing cases". When talking about "dividing cases", I have to pretend to know some "English".
"Divisional application" in English is called "divisional application", which means that one patent is divided into two, three, four... I understand the meaning, but here comes the question, how should we divide the cases?
When?
Patents are not divided if you want, you can divide them if you want. How to say this?
Let’s first look at the original words in the examination guide: “The applicant shall, at the latest, have a period of two months from the date of receipt of the Patent Office’s notification of granting patent rights to the original application (i.e. the registration formalities). If a divisional application is filed before the expiration of the above period, or the original application has been rejected, or the original application has been withdrawn, or the original application is deemed to have been withdrawn and the rights have not been restored, no further divisional application is generally allowed. "
Translated into vernacular, this case can be divided before it is "finalized".
How?
When talking about "division", we cannot fail to mention "singleness". The two of them are like a chicken-and-egg relationship.
"Singleness" means that an invention or utility model patent application should be limited to one invention or utility model. Two or more inventions or utility models belonging to a general inventive concept can be treated as one Application made.
However, regulations are regulations. In actual applications, it is often considered to include multiple patented technologies in one patent application due to factors such as convenience, cost, and patent layout. Subsequent applicants can apply for division by themselves, or proceed with division after receiving review opinions requesting division during the review process.
It is worth noting that the original application is generally called the "parent case" and the "divisional case" that is divided is generally called the "child case". It can also be known from the names that the two applications are actually "blood related" applications, so the separated "child case" can inherit the filing date of the "parent case". If the parent case enjoys priority, the "child case" can also inherit the priority date of the "parent case". It can be seen that the sub-case is not a new application, but a part of the original application. Therefore, Article 43 of the Implementing Rules of the Patent Law stipulates: A divisional application may retain the original filing date, and if it enjoys priority, the priority date may be retained.
why?
Although the division of cases is mainly based on a single issue, however, how to effectively use this procedure is the focus of what I want to say! But if there is no unity issue, what need does the applicant have to file a divisional case?
Here’s the key point. Since the claims can be modified or rewritten during the division process, in the process of continuous product development and evolution, the effective use of “division” can make the claims of the sub-case consistent with the original claims. The product looks more like Youmuyou!
Now that we have small goals, how can we achieve them?
This must have a prerequisite! What's the premise? The iron-clad law: Article 33 of the Patent Law! This clause is amazing. From active modification, to modification in the process of responding to review opinions, to division of cases, and then to modification in the invalidation process, this clause has always been the "bottom line" that cannot be touched in various modification timing and modification methods. ”, that is, “it shall not exceed the scope recorded in the original description and claims”.
With this "bottom line", the scope recorded in the parent case manual is simply too critical. How to do a good job in the "content layout" of the manual?
To put it simply, an agent who cannot follow the content given by the inventor and cannot expand the plan is not a good agent. If you have nothing to do, chat with the technicians more and learn more about the evolution of technology and the direction and trends of future product development.
How can this understanding be reflected in the content of the manual? Common extensions include: expansion of implementation or application scenarios, expansion of equipment, expansion of execution processes or steps, the above-mentioned alternatives, etc. These are all aspects that can be racked with brains. With these contents at the base, we will have sufficient confidence to modify or even rewrite the claims during the subsequent division of the case. Maybe we can directly "collide" with the products that appear later!
After rambling so much, let me summarize in one sentence: The program must be clear and the writing must be excellent. Only by making good use of the program to fully amplify the "writing" ability can one be considered a qualified small professional agent!