Filing a Divisional Patent Application: Everything You Need to Know
Filing a divisional patent application provides information that is already contained in a previously filed application.3 min read
What Is Filing a Divisional Patent Application?
Filing a divisional patent application provides information that is already contained in a previously filed application.
What Does Continuation-In-Part, Divisional, and Continuation Mean?
Continuation, continuation-in-part (CIP), and divisional are all types of applications. These three applications are totally different and stem from another patent application. These three distinctions allow the inventor to alter totally different points of the unique (or "parent") application by submitting brand new claims and improvements to the parent, in addition to the date it was filed.
Continuation, continuation-in-part (CIP), and divisional are typically not utilized for provisional software, as the software that will declare the good thing about a provisional software is the following non-provisional software. A continuation permits the changing of claims, without modifying the specification. CIP permits changes to the specification, without altering the vast majority of specifications. Continuation and CIP are often voluntarily submitted, whereas divisional applications are often a requirement from the examiner.
What Is a Continuation Application?
A continuation permits an inventor to add new claims to a parent application, as long as the patent is still active. The Manual of Patent Examining Procedure (MPEP) provides inventors the right to modify their previous patent claims any time before the patent is approved or abandoned. This is known as a continuation and gives the inventor the right to further examine their application based on any new claims.
This rule applies to continuation, CIP, and divisional applications. A continuation application allows the patent application holder the right to modify or increase their claims without having to file a separate patent application while losing the initial file date. It’s important to note that only the claims in the application can be modified and nothing else.
Based on MPEP, continuations must not be anything that could be considered “new matter” if it had been submitted during the initial application process. The specs as they had been written within the parent application should have the ability to help the brand-new claims, or otherwise, the continuation fails. If new materials are required with a purpose to help the new claims, a continuation-in-half must be filed as an alternative.
Another use for the continuation application is to resolve an examiner’s rejection or mix of allowance. Sometimes an examiner might approve the application if specific claims are eliminated or adjusted. In these instances, it may be a good idea for the inventor to submit a continuation with those claims moved into the continuation. This loophole would allow the inventor to still fight for the claims if they are integral to the application, but would not hinder the examiner’s approval of the initial application.
When Is a Continuation-In-Part (CIP) Appropriate?
While a continuation doesn't enable changes to the specs, a CIP provides inventors the power to manipulate specifications from the original application. MPEP says that CIPs are applications that repeat many of the original specifications from the previous nonprovisional patent application with additional information that was not originally mentioned.
CIP permits inventors to incorporate "enhancements" to the unique design that was developed after the parent application was filed. Nearly all of the specs will be repeated directly from the original application. The invention within the CIP is generally identical with only slight modifications and improvements to the design or functionality. These new specifications may be added to explain/depict the enhancements. Claims within the CIP that concern subject material disclosed within the original application are also given rights to the parent’s filing date.
When Is a Divisional Application Appropriate?
Divisional applications are often used because an examiner of the original patent is restricting approval. Most patent applications require something referred to as “unity of invention” which means that inventors are not able to submit applications that have several unique ideas or concepts. If an application doesn't have unity of invention, the examiner might ask the applicant to maneuver the additional innovations into divisional purposes.
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