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Wendy ZHANG
Junior Partner
Group Leader of Electrical Engineering Department(DivisionⅡ)
Chinese Patent Attorney
Hello everyone, welcome to Linda Liu & Partners on air!
This is Wendy Zhang, a patent attorney in the electrical field. Today, I’d like to share the divisional application practice in China.
In China, divisional applications can be filed based on an original application if the original application contains more than one technical solution in the whole disclosure. Generally, there are two types of divisional applications. The first one is commonly known as the first generation of divisionals. In this case, as long as the original application is pending, you can file divisionals based on this original application as many as you want. The other one is commonly known as the second and later generations of divisionals which are filed based on a previous divisional application. In this case, usually the original application is no longer pending, and a further divisional needs to be filed based on a previous divisional as its own parent application. The further divisional needs to be filed during pendency of its own parent application with a trigger of Unity rejection with respect to that parent application issued by CNIPA.
Now that for any divisional, regardless of the first generation or the second and later generations, a pending condition of its own parent application is required,it’s important forthe practitioners to understand the exact meaning of the period of “pending” in China.
Well, first, let’s talk about the pending period of an application in China.
The pending period of an application refers to a period from the time of filing to the time of being closed. What may be less obvious is that, the deemed mailing time of any office actions should be included into the pending period, which is a statutory of 15 days from the date of issuing. What’s more, a designated or statutory response period after the issuingof office actions should be included into the pending period. For example, if a Notice of Allowance is issued by CNIPA, 2 months’ period after the deemed mailing reception of the Notice should be included into the pending period of this application, regardless of whether you decide to abandon the case or proceed with the registration. Similarly, if a Rejection Decision is issued by CNIPA, 3 months’ period after the deemed mailing reception of the Decision should be included into the pending period, regardless of whether you decide to abandon the case or proceed to file a reexamination request.
On the other hand, the closed state of an application means that there would not be any further steps for this application after the designated or statutory response period has elapsed. Therefore, even during the reexamination of the case after being rejected, one or more divisional applications can still be filed regardless of whether the rejection would be withdrawn or maintained. In the case that the Rejection is withdrawn, the case will be returned to the previous examiner to perform regular examination and we can of course file divisionals. In the case that the Rejection is upheld, we still have 3 months to consider filing one or more divisionals after the deemed mailing reception of the Reexamination Decision. And even more, during the period of the appeal lodged by someone who’s not satisfied with the reexamination decision, one or more divisional applications may be filed regardless of whether the result of the lawsuit is positive or negative.
Now, we have learned that the pendency of the parent application is necessary to file a divisional application, here comes one question, how to extend the pending period?
The amended Examination Guidelines as of November 1, 2019 has just added the option of Deferred Examination. We can choose to defer the substantive examination by 1 year, 2 years, or 3 years. Another approach to extend the pending period is to request for extension for each of the office actions by 2 months, at the most, twice. And also, we can even choose to withdraw the case and then request for recovery before the recovery opportunity elapses, though risky but works. The extended pending period would in turn allow for an extended time period when you are allowed to file one or more divisional applications from the parent application in China.
Next, let’s talk about the key factor of filing a second or later generation of divisional, the unity rejection.
If you are interested in filing continuous divisional applications and haven't fully made up your mind on the subsequent actions at present, when filing a divisional, we would suggest taking measures to keep the option to file a further divisional open. We could add an independent claim which is in lack of unity with the existing claims. Then, we would keep contacting the examiner before the first office action is issued, explain and persuade the examiner to issue a unity rejection as we need. According to our practice, it is rare that the examiner would like to issue a unity rejection after the first office action because he or she must have paid great effort to perform the search work for each of the claims. The preparation of provoking a unity rejection for the divisional application should be done as early as possible.
This is the introduction of the divisional application practice and some of our experiences to enable further divisionals in China. Feel free to contact me if you have any questions. As a leading patent law firm in China, we are always glad to help. See you next time.
