Abstract: Article 42(1) of the Implementing Rules of the Patent Law stipulates that if a patent application includes two or more inventions or utility models, the applicant can file a divisional application with the China National Intellectual Property Office (CΝIPO) before the deadline specified in Article 54 of these Rules.

In consideration of their patent strategy, patent applicants often submit divisional applications within the statutory timeframe for cases with technical solutions that differ from the parent case's scope of protection. This approach allows them to establish different perspectives and directions for their patent portfolio. However, in recent years, with the patent examination becoming more stringent, various agencies have received examination opinions related to utility models. Some examiners have even applied the standards for inventions and common knowledge to assess the "creativity" of utility models. With the CΝIPO’s increasing efforts to combat abnormal applications, divisional applications based solely on a different scope of protection are no longer accepted by the CΝIPO.

Case Overview:

• In October 2017, Company A submitted a utility model patent application (referred to as the "parent application") to the CΝIPO.

• In November 2018, using the parent application as a basis, Company A submitted a divisional application (referred to as the "divisional application").

• In December 2018, the CΝIPO issued a notice granting utility model patent rights for the parent application.

• In October 2019, the CΝIPO, citing that the parent application did not include two or more utility models, thus not meeting the requirements of Article 42(1) of the Implementing Rules of the Patent Law, issued a notice regarding the divisional application being treated as not filed.

• On October 31, 2019, Company A disagreed with the CΝIPO’s decision to treat the divisional application as not filed. They filed an administrative reconsideration application with CΝIPO, primarily arguing that the divisional application was filed within the legally specified time frame and that it constituted two separate applications, as the scope of protection was different from the parent application's claims. They believed the divisional application was legal and that the CΝIPO’s decision was unjust.

The Court's Perspective:

According to Article 42(1) of the Implementing Rules of the Patent Law, when a patent application does not meet the requirement of unity, the applicant may file a divisional application. The prerequisite for filing a divisional request is that the patent application includes two or more independent and different inventions or utility models. This provision is primarily intended to protect technical solutions that cannot be covered by the parent application due to a lack of unity. It aims to prevent situations where an applicant pays the fee for one patent application and obtains protection for several different inventions. It also simplifies patent application classification, retrieval, examination, and facilitates the post-grant transfer of patent rights and the signing of patent licensing contracts.

In cases where the difference between the parent application's claims and the divisional application's claims results from slight variations in specific structural expressions, and the parent and divisional applications are essentially directed to the same inventive concept, it does not qualify for divisional filing. Therefore, it's essential to ensure that the divisional application's subject matter is distinctly different from the parent application to meet the divisional filing criteria.

Case Analysis:

China follows the principle of unity in patent applications, which means that a patent application should be limited to a single invention. The primary purposes of this principle are to prevent applicants from paying the fee for just one patent application but obtaining protection for several different inventions and to facilitate the classification, retrieval, and examination of patent applications. It also simplifies patent post-grant procedures, such as the transfer of patent rights and the signing of patent licensing contracts.

When a patent application includes at least two inventions, Article 42(1) of the Implementing Rules of the Patent Law provides a remedy. In such cases, the primary objective is to protect technical solutions that could not be included in the parent application due to a lack of unity, thus preventing the loss of the applicant's interests.

In this case, the difference between the parent application's claims and the divisional application's claims is primarily in the specific structural expressions. This difference is not significant enough to constitute two or more independent and different inventions. Therefore, the parent application adequately protects the applicant's interests, and there's no need to file a divisional application. Additionally, filing divisional applications in such cases can lead to issues of double patenting. Therefore, based on the current examination trends, it is essential for both applicants and patent agents to understand that not all divisional applications will be accepted by CΝIPO. Divisional applications should only be filed when one patent application includes two or more different and independent technical solutions. If there is only one inventive concept within a patent application, the subsequent divisional application is likely to be rejected.

Conclusion

It is vital to remember that divisional applications are not a universal remedy. What's most important is to draft the scope of protection effectively during the early stages of case preparation to avoid a situation where the scope of protection is too narrow upon receiving the Notice of Authorization.