Written by Haoyu (Elliot) Zhou

Partner and Patent Attorney at Foundin IP

 

According to the Chinese Patent Law, applicants can voluntarily file divisional applications as far as the first Chinese patent application is pending. In other words, regardless of the presence or absence of a unity rejection in the parent application, applicants are allowed to freely file divisional application(s) at any time before the first CN application is concluded. The claim set in the divisional applications could be broader, narrower, similar or different from the parent patent application, provided that there is no double patenting or new matter introduced. This divisional practice is commonly known as “voluntary divisional patent filings” and has been practiced by patent attorneys in China over decades.

However, the CNIPA examiners seem to have changed their attitudes recently, and are keen to issue notifications rejecting the utility model divisional filings, especially if the divisional utility model applications include claims that are arguably similar to the parent utility model patent.

 

Quite a number of patent law firms in China have received a “Notification of Divisional Application Deemed as Being Not Filed” from the CNIPA. The detailed reasoning given by the CNIPA is copied below (Chinese only), and its literal translation is that “According to the spirit of legislation for divisional applications, where a patent application contains multiple inventions or multiple utility models, applicant(s) are allowed to file divisional application(s) only under a circumstance where there is a lack of unity therebetween. The parent application in this case, however, has no such a circumstance stated above, and thus the present divisional application does not comply with Rule 42.1 of the Implementing Regulation of the Patent Law, and is therefore deemed as being not filed.”

 

 

Even worth, unlike office actions where the applicants are allowed to submit an argumentation, this Notification does not allow the applicants to file any responses. According to what’s stated in the Notification, applicants can only file either a Request for Administrative Review within 60 days from receiving said notice, or file an Administrative Litigation to the Beijing IP Court within 6 months from receiving said notice. In other words, this Notification is like a preliminary Decision and can’t be responded as usual.

 

Many applicants and their representative patent law firms are not happy about such a Decision, as the CNIPA’s interpretation for the “spirit of legislation of divisional applications” is an extremely narrow interpretation that did not make much sense. According to our understanding, voluntary divisional applications are different from “passive divisional applications” in that the former are supposed to be the applicant’s “free act of the will” and shall not be based on the presence or absence of any “unity issues” in the parent application. But, the CNIPA seemed to hold an opinion that utility model divisional application can only be filed if there is a unity issue raised in the parent application or if the claims in divisional applications are highly different from the parent utility model. However, neither the patent law nor the patent examination guideline include any articles or rules that forbid the applicants from voluntarily filing divisional applications while the first CN application is pending.

 

According to our search, quite a few applicants who received such a notification have appealed the Decision to the Court. However, based on the Judgements that are publically available, it seems that none of the administrative lawsuits at Beijing IP Court have overturned the CNIPA’s Decision. This implied that both of the CNIPA and the Courts are following the same standard and do not like to see applicants freely file divisional applications for utility models. Fortunately, this rejection did not so far apply to any of the invention patent divisional applications.

 

From Foundin’s perspective, we think this kind of Notification may be related to the CNIPA’s policy to crack down abnormal patent filings over the years. As many utility models are considered as “abnormal filings”, the CNIPA is always trying to take measures to cut down the number of bad-faith filings in utility models. As a result, the CNIPA tend to believe that “divisional utility models” which have similar scope to the parent utility model would be presumably “abnormal filings”, and thus issue Notifications of this kind to stop divisional utility models from being filed.

 

Anyway, if applicants intend to file utility model divisional applications in the future, our advices are:

(i) Try to make the divisional claims look differently from the parent utility model. This could possibly reduce the risk of receiving “Notification of Divisional Application Deemed as Being Not Filed” from the CNIPA.

 

(ii) It may be possible to add highly different independent claims in the parent utility model application, in a hope to trigger a unity rejection, and thus get the opportunity to file a divisional utility model application. However, this approach is just theoretically possible. We can’t guarantee its success because there is no substantive examination for utility model applications. It is hard to say whether the CNIPA examiners will actually issue a unity rejection even if there are highly different independent claims in the parent application ;and

 

(iii) Fortunately, only utility model divisional applications seemed to have been targeted at the moment. For divisional applications of invention patents, there is probably less risk even if the divisional claims are similar to the parent patent.

 

If you have any questions in relation to this topic or any general questions about the Chinese Patent Law and Practice, please feel free to write back to us at patent@foundin.cn.

 

Best regards,