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IP NEWS FROM CHINA

Author: CHISPO

Date: 2019-10-17

2019 Revision of Patent Examination Guidelines - Divisional Application

On September 24, 2019, the State Intellectual Property Office of China issued the revised Guidelines for Patent Examination, which will be implemented from November 1, 2019. The official link: http://www.sipo.gov.cn/zfgg/1142481.htm

 

This amendment involves many aspects of patent application and agency practice, among which the amendment of "divisional application" has attracted the author's attention.The Guidelines for this review include significant changes in the timeline for filing a divisional application, as well as those related to the applicant and inventor of the divisional application. Amendments are as follows:

Before amendments

After amendments

Part I, Chapter I, Section II5.1.1

(3) Time of submission of divisional application

......

However, with the exception that another divisional application is filed by the applicant according to the Office Action made by the examiner due to a unity defect in the divisional application. Regarding this exception, the applicant, when filing another divisional application, shall submit a copy of the Office Action indicating the unity defector of the Notification to Make Divisional Application issued by the examiner. Where the copy of the Office Action or of the Notification to Make Divisional Application in conformity with the provisions is not submitted, the application shall not be treated as exception. Where the copy is not in conformity with the provisions, the examiner shall issue the Notification to Make Rectification notifying the applicant to make rectification. Where no rectification is made within the time limit, the examiner shall issue the Notification That Application Is Deemed to be Withdrawn. Where the copy is still not in conformity with the provisions after rectification, the examiner shall issue the Notification that Divisional Application Is  Deemed Not to Have Been Filed and make a decision to close the case.

Part I, Chapter I, Section II5.1.1

(3) Time of submission of divisional application

......

However, where the Notification to Make Divisional Application or the Office Action issued by the examiner indicates the unity defect, the applicant files another divisional application according to Office Actions issued by the examiner; the time limit of filing another divisional application shall be examined based on the divisional application which has the unity defect. Where the provisions are not met, and the divisional application which has the unity defect can’t be the basis for another divisional application, the examiner shall issue the Notification That Divisional Application Is Deemed Not to Have Been Filed and make a decision to close the case.

 

Part I, Chapter I, Section II5.1.1

(4) Applicant and inventor of divisional application:

The applicant of a divisional application shall be the same as that of the initial application. Where this is not the case, a document certifying the change of the applicant shall be submitted. The inventor of a divisional application shall be the inventor or part of the inventors of the initial application. Where there is any non-conformity with the provisions, the examiner shall issue the Notification to Make Rectification, notifying the applicant to make rectification. Where no rectification is made within the time limit, the examiner shall issue the Notification That Application Is Deemed To Be Withdrawn.

 

 

Part I, Chapter I, Section II5.1.1

(4) Applicant and inventor of divisional application

The applicant of a divisional application shall be the same as in the initial application while filing the divisional application. The applicant of another divisional application of a divisional application shall be the same as the divisional application. Where the provisions are not met, the examiner shall issue the Notification that Divisional Application Is Deemed Not to Have Been Filed.

The inventor of a divisional application shall be the inventor or part of the inventors of the initial application. The inventor of another divisional application of a divisional application shall be the inventor or part of the inventors of the divisional application. Where there is any non-conformity with the provisions, the examiner shall issue the Notification to Make Rectification notifying the applicant to make rectification. Where no rectification is made within the time limit, the examiner shall issue the Notification That Application Is Deemed To Be Withdrawn.

 

Generally speaking, the amendments to the content of the divisional application have limited the time of filing the divisional application based on the unity defect, and have made stricter requirements for applicants.

 

 

 

 

 

                                                                                                                                                                                                                                                                                                            Source:http://www.sipo.gov.cn/zfgg