CHINA DIVISIONAL PATENT STRATEGY: Recent Judgment Narrows What Constitutes “Different Inventions” for Divisionals
In China, patents applicants take advantage of a commonly-used divisional filing strategy to achieve a fine-tuned balance between protection scope and protection period (if used properly). Patent applicants (especially foreign applicants) widely welcome this well-established strategy, and up until now, have used it with much success. In fact, we recommend this strategy and have even written about this China divisional patent strategy. However, a recent judgment decision has called this strategy into question. We share more about this interesting case below.
A company in Zhejiang Province (JC Company) filed a divisional application with claims having a different scope of protection from its utility model “parent” (which was about to be granted). Eleven months later, the China Patent Office, on the grounds that the original application did not include “two or more utility models” (as required under Article 42.1 of the Implementing Regulations of the Patent Law, herein after “Regulations”), issued a “Notice of a divisional application being deemed as never submitted”.
JC Company disagreed with the Notice and filed an application for Administrative Reconsideration. After receiving an unfavorable decision, it brought suit against CNIPA at the Beijing IP Court. The Beijing IP Court sided with CNIPA and held that Article 42.1 of the Regulations and additional provisions from the Examination Guidelines1 were applicable to this case. The Decision provided the following explanation:
… the prerequisite for filing a divisional request is that the patent application includes two or more inventions, utility models or designs. If, upon examination, the Examiner concludes that the original application meets the unity requirement (i.e. the claims in the divisional application and the original application belong to the same inventive concept), then the applicant cannot file any divisional applications.
The original intention of this Regulation was to protect inventors’ legitimate rights and interests, to facilitate patentees’ exercise of rights and obligations, to prevent applicants from including multiple inventions into one patent application, to facilitate patent classification and search for examiners during prosecution, and to promote effective use of IP by the public.
Based on this, the “two or more inventions, utility models or designs” in the Regulations refer to two or more independent and different inventions. It does not mean that an applicant can freely file any divisional application, especially those whose claim sets are just a simple modification or combination of the same technical features of the parent application.
In the instant case, the original application and the divisional application share the same specification. According to the description, embodiments, and figures, both the parent and the divisional application disclose a labor-saving rotary mop with a locking mechanism. The differences between the two sets of claims mainly lie in the different expressions of the aforementioned locking mechanism structure. According to the Court, such “different expressions” of the same feature is not significant enough to constitute two or more independent and different inventions. In other words, the original application does not “include two or more utility models” and therefore does not meet the requirements for filing divisional applications. The decision is upheld.
Judgement’s Impact on China Divisional Patent Strategy
In the above decision, the Beijing IP Court clearly pointed out that “the ‘two or more inventions, utility models or designs’ in the Regulations refers to two or more independent and different inventions or creations. Typically, an applicant can freely modify or combine the technical features of the parent application and file a divisional application, provided it is not directed towards the same invention.” In JC’s case, because the specification only described one example/embodiment, the judge believed that the divisional application was describing the same invention but just in a different way.
Regrettably, the Patent Law and its Regulations / Guidelines do not interpret what the terms “two or more” and “different” inventions mean. In practice, it is generally understood that two sets of claims using different expressions should be construed as having two “different” protection scopes and thus are not prima facie identical. In our experience, partial overlap of claim scopes in this type of situation is indeed very common (for example, small scope vs. large scope, different protection focus, etc.). However, the Court in this case believes that two different claim sets that are merely expressed differently cannot be necessarily considered “independent” from each other (of note, the term “independent” also lacks explanation). In this case, the presence of only one actual example/embodiment further supported the idea that there was only one invention. As such, the Court asserted that these types of applications do not lack unity, and subsequently divisional applications may not be filed to pursue other “expressions” of the same invention. The Court’s extremely narrow interpretation of what “different” protection scope means strongly harms the interest of the patentee.
This case has caused widespread alarm and strong opinions all over the Internet. Many believe that a divisional application should only be used for inventions that cannot be protected in the original application due to unity. Allowing otherwise would weaken the publicity function of patent publications, waste review resources, and violate the original intent of the legislation. Others, especially applicants from North America and Europe, see this as a very worrying trend. We believe that the original intention of this tightening is to crack down on irregular applications, but this particular interpretation hurts normal users who use such divisional application strategies under normal circumstances.
It is still unclear whether this court case will result in a more stringent divisional review standard at the CNIPA. If it does happen, we would not be surprised, as the Chinese Patent Office has been moving in the same direction in other areas.
In view of this potential change, we suggest the following to help applicants better prepare their original specifications and also subsequent divisional claims:
- Provide as many combinations of technical features as possible and their associated technical effects.
- To achieve protection over a wider range of top-level “independent” embodiments, try to describe different protection points from different angles, rather than simply describing the top level (broadest claim) of each technical feature.
- For utility model applications (UMs), it may be difficult to adjust the scope of the claims during prosecution due to the lack of subsequent substantive examination for UMs. As such, it is even more important to carefully consider the right divisional strategy from the very beginning, especially for UMs that lack specific examples in the specification.
It should be understood that the above suggestions are directed specifically towards addressing the “different inventions” requirements of a divisional application, and other normal requirements for divisional applications (such as obtaining support, etc.) remain unchanged.
We will keep you updated on any further developments. Stay tuned for more important updates on IP law in China.
If you are also interested in other suggestions, generally need help with patents, or have any questions, please contact us at firstname.lastname@example.org.
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This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.
1 Section 3.1 of Chapter VI of Part Two of the Patent Examination Guidelines.