Utilizing a Divisional Application

Aki Ryuka
Patent Attorney, Japan

Divisional applications should be filed not only to protect different invention aspects but also for the following strategies.

A. Helping Litigation and Licensing
In patent infringement litigations, the accused infringer alleges non-infringement by proving how their product structure differs from the patent. However, to allege the difference, they generally must explain their products.

 1. Having a backup application
If the patent owner has a divisional application, the owner can amend the claims to cover the product explained by the infringer. This risk makes it harder for the infringer to prove the difference, which elevates the patent owner’s position in litigation and patent licensing negotiations.

If the claims of a divisional application can be amended in various ways (i.e., various features are described in the specification), negotiations can proceed advantageously even if there is the patent is likely not infringed.

 2. Considering costs
These advantages are available only when the claims can be amended, typically for 1.5 to 3 years. To make it longer, the applicant must file a chain of divisional applications and delay the examination (methods in Japan, in the US, China, EU, etc.), which is costly.

If the infringer also sells products in the US or Germany, and if you can amend the claims in the US or Germany, you can achieve similar effects in the litigation and negotiations in other countries. Large damages are awarded in the US, and injunctions are easily granted and examination is slow in Germany. These factors make them suitable for backup applications.

We suggest filing divisional applications in the most important countries.

B. Covering the Competitor Products (RYUKA Suggestions)
As prior applications are cited in the examination, your application is also cited to a later filed application (“Later Application”). Since the Later Application is in similar technological fields, its applicant is often your competitor. Then, we recommend considering the following strategy with a divisional application.

 1. Claiming what the competitor claimed
Because your application discloses at least one aspect of the Later Application claims, you might be able to patent what the competitor tried to patent. Because the claims often cover the applicant’s future products, you can increase the possibility of enforcing your patent to the competitor applicant.

 2. Covering the embodiments of the Later Application
The embodiments show the applicant’s future product ideas. Therefore, we suggest considering a divisional application and drafting claims covering the Later Application‘s embodiments.
The number of citing applications is a measure of your application value. If there are many Later Applications, we recommend filing a divisional application first and then carefully considering the above.

 3. Countries to file divisional applications
The above strategies should be taken in countries where the competitor plans to sell the products. We suggest looking at where the citing applications have been filed and using it as a reference to predict the selling countries.

 4. When to study Later Applications
We recommend considering this strategy at the last opportunity for a divisional application (i.e., at the allowance or first rejection decision) because the number of citations increases over time. Delaying the examination or deferring the application filing via the PCT makes it easier to discover the Later Applications before the grant.

C. Requirements for filing a divisional application
 1. When can you file?
 - Before the first Office Action (OA)
 - Within periods for responding to OAs or appealing to the board of appeals (see details)
 - Within a period for paying the issue fee, provided that the application has not been appealed

 2. Filing with new divisional claims?
If a feature is deleted when a divisional application is filed, the deleted feature cannot be reinstalled. We suggest filing a divisional application that is the same as the parent application and introducing new claims by a preliminary amendment or translation to maximize the scope of future amendments.

 3. Avoiding the first and final Office Action (OA).
If the parent application receives an OA before the examination is requested for the divisional application, the reasons for the parent OA must be cured in the divisional application beforehand. Otherwise, the first OA to the divisional application will be final, and the applicant can only limit the existing elements in the claims.

If you need any other information, please contact us.