When is a divisional application appropriate?

The option to file a divisional application arises if an Examiner thinks that your patent application contains multiple inventions and thus issues a Restriction Requirement compelling you to pick one. A response to a Restriction Requirement must include an election of certain claims, thereby leaving non-elected claims to be withdrawn or canceled. A divisional application allows you to pursue those non-elected claims while maintaining the earlier filing date, known as the priority date.

As a type of continuing application, a divisional app will include a priority claim to the parent application and, therefore, maintain the priority date of the parent filing. What started off as a single (parent) patent application may lead to multiple child applications, resulting in a patent family which is a good thing. Having multiple patents bolsters the overall IP of your business, giving you more ways than one to block the competition.

What is the difference between a continuation and divisional application?

Both continuations and divisionals do not add any new matter. What makes a divisional different than a continuation is that a divisional is specifically directed to the claims or “inventions” that were not elected in the parent application. A continuation may contain any claims supported by the disclosure of the parent application.

Similar to a continuation, a divisional keeps the pendency of the patent family alive so that you have the option to file further child applications if desired. One common regret of patent owners is that the pendency of the patent family is dead such that they cannot file any more continuing applications.

When is a strategic time to file a divisional application?

A divisional must be filed while the parent application is still pending (i.e., before abandonment or grant), but should you wait until the parent is about to be granted to file the divisional? If your budget allows, consider filing the divisional sooner. An earlier filing date places your divisional in front of others waiting in the queue for examination.

What makes a utility divisional different from a design divisional?

Design divisional applications typically arise from including multiple embodiments in a single design patent application. In such instances, a design divisional is fairly straightforward as it will contain the embodiment not chosen in the parent application. A utility divisional can be a bit more complicated in that the line between the multiple embodiments or inventions can be a bit fuzzy. What separates one embodiment from another in a utility application might not be as well delineated in a utility application as in a design application.

Utility applications will commonly contain dependent claims that may touch on features in non-elected embodiments. While such dependent claims may initially be withdrawn in response to a Restriction Requirement, there may be an opportunity for rejoinder of the withdrawn claims due to the allowance of a generic linking independent claim.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and entrepreneurs with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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