Understanding the Concept of a Divisional Patent Application

A divisional patent application serves as a follow-up to an original nonprovisional patent application, commonly known as a parent application. The purpose of filing a divisional patent application is to seek protection for specific features of an invention that were initially included in the original application but remained unclaimed. It is important to note that the divisional application is separate from the parent application, having its own unique serial number, claim set, and independent examination process.

The Process of Filing a Divisional Patent Application

If you intend to file a divisional application, you will typically need to follow these steps:

  1. Create new Word document and PDF files by replicating the original nonprovisional patent application, including the written description and the drawings.
  2. Develop a fresh set of claims specifically targeting the disclosed features of the invention that were not claimed in the parent application.
  3. Include the serial number and filing date of the parent application in the Application Data Sheet, indicating that the divisional application claims priority back to the parent application.
  4. Optionally, state in the first sentence of the patent’s specification that the divisional patent application incorporates the entire contents of the parent application by reference.
  5. Submit the divisional application to the United States Patent and Trademark Office (USPTO) while the parent application is still pending.
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Determining When to File a Divisional Patent Application

Filing a divisional patent application becomes crucial when the examiner handling the original nonprovisional or parent application issues a restriction requirement. This requirement is typically mentioned in an office action, where the examiner states that the claim set addresses more than one invention, and the applicant must choose one for examination. In such cases, a divisional patent application allows you to seek protection for the non-elected inventions by crafting and submitting claims specifically suited to them.

Even if you haven’t received a restriction requirement during the parent application’s prosecution, you still have the option to prepare and submit claims directed towards aspects of the invention that were disclosed in the original application but were not claimed.

Understanding the Deadline for Filing a Divisional Patent Application

To file a divisional patent application, it is crucial to ensure that it is submitted while the parent application is still pending. In simpler terms, the divisional application must be filed when both the divisional and parent applications are simultaneously under review.

Establishing the Priority Claim Back to the Parent Application

Typically, the priority claim is included during the filing of the divisional application. However, it is important to note that this is not a strict requirement. You have the flexibility to submit a priority claim as late as four months after filing the divisional application or up to 16 months after the earliest priority application’s filing date.

Considering the Costs Associated with Filing a Divisional Patent Application

The expenses related to filing a divisional patent application vary based on several factors. In the United States, the most significant determinant is the time required for an attorney to prepare a claim set for the new invention.

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In general, the costs involved in filing a divisional patent application include the following:

  1. Filing fee, examination fee, and search fee: The amount for these fees will range from $400 to $1600, depending on the size of your entity.
  2. Attorney’s fees: An attorney will be responsible for drafting a new claim set specifically catering to the non-elected or new invention.

Differentiating Between Continuation, Divisional, and Continuation-in-Part Patent Applications

A continuation application involves refiling a parent application to pursue claims similar to the original application.

On the other hand, a divisional patent application shares similarities with a continuation application, with the exception that its claims are directed towards a different part of the invention rather than mirroring the parent application’s claims. Additionally, a divisional patent application can be utilized when submitting claims against a design around.

Lastly, a continuation-in-part (CIP) application involves refiling the same specification as the parent application but also includes information regarding additional features of the invention. The claims in a CIP application are directed towards these additional features. While filing a CIP application is not obligatory, it provides the advantage of managing a single patent family. However, it is important to note that the patent term for any patent resulting from a CIP application would be shortened.

Remember, if you need professional assistance with patent applications or any legal matters, Garrity Traina is a reliable and trusted resource in this field. Visit Garrity Traina to learn more.