In the patent filing process, applicants may need to file divisional applications to address unity of invention concerns or expedite securing protection of allowable claims. Therefore, it is essential for applicants to comprehend when to file a divisional application and what to be aware of during the process.
There are Invention, Utility Model and Design Patents in Taiwan. The timing for filing divisional applications for each of these three kinds of patent is set forth below.
(1) Invention applications
Taiwan's patent system adopts a relatively lenient attitude towards filing of divisional applications for inventions. In other words, so long as an Invention patent application is pending and is within the time limit for filing divisional applications, whether it is an originally filed application or an application that has already been divided, it can serve as the basis for filing divisional or sub-divisional applications taking advantage of the priority or filing date of the parent application.
As for the timing for filing divisional applications, the parent application must either still be pending at the Intellectual Property Office (IPO), or within three months of receiving the notice of allowance. On the other hand, for cases that have received a final Office Action, since the examination process has finalized, a divisional application can no longer be filed.
According to Article 34.5 of the Patent Act, [a] divisional application can be filed for the inventions disclosed in the description or drawings of the parent application not being identical with the inventions called for in the approved claims.
If a divisional application is filed during the pendency of the parent application, the examination of the divisional application continues from the procedure left unfinished in the parent application. To be more specific, if a divisional application is filed during the preliminary examination stage of the parent application, the examination of the divisional application will start from the preliminary examination stage. If the divisional application is filed when the parent application has already entered the re-examination stage, the divisional application will directly enter the re-examination stage.
The difference between starting the examination of a divisional application from the preliminary examination stage and starting from the re-examination stage mainly lies in the number of opportunities for the applicant to respond to the rejection by the Taiwan IPO. If a divisional application is filed during the preliminary examination stage, the applicant will have at least three opportunities to file arguments or amendments, namely, against the preliminary rejection pre-notification (Official Letter), the first formal Office Action and the re-examination opinion pre-notification (Official Letter.) If the divisional application is filed during the re-examination stage, the applicant may only have one opportunity to respond, specifically, to the re-examination opinion pre-notification (Official Letter.) If the rejection cannot be overcome, the applicant will receive a final Office Action. In that case, there will be no further opportunities for division.
The following diagram illustrates the different stages of a divisional application in Taiwan which enters either the preliminary examination or the re-examination stage, depending on the timing of filing the divisional.
(2) Utility Model (UM) applications
Utility Model applications, after filing, are subject to formality examination only. A notice of allowance will issue to a UM application soon after it meets the formality requirements. Within three months of receiving the notice of allowance, the applicant may file a divisional application, if intended. On the other hand, if there are any formality objections raised by the Examiner during the formality examination, and such objections are not overcome by the applicant’s response or amendment, the Examiner might directly issue a formal rejection (final). If such rejection issues, a divisional application can no longer be filed.
(3) Design applications
Taiwan adopts “one design, one application” policy. When a Design application includes multiple designs, the applicant may file several Design applications at the same time. Alternatively, the applicant may file one single Design application in the first place followed by divisional application(s). A Design application is subject to substantive examination and its examination procedure is similar to that of an Invention application. To wit, a Design application will go into the preliminary examination stage after fulfilling the formality requirements. Should a first Office Action (i.e. final rejection at the preliminary examination stage) be issued to a Design application, the applicant may file a request for re-examination so that the application will be further examined at the re-examination stage.
Similarly, a divisional application can be filed during the pendency of the parent design application and the examination of the divisional application continues from the procedure left unfinished in the parent design application. However, contrary to an Invention application, no divisional application is available after a design application receives a notice of allowance.
In addition, the applicant may directly receive a notice of the allowance if there are no objections/reasons for rejection raised during examination. Under such circumstances, filing of divisional applications becomes no longer available. For precaution’s sake, for applications including multiple designs, divisional design applications should be filed as early as possible.
This information is provided to help applicants decide, of their own, the most appropriate time to file divisional applications so as to better plan their patent filing strategies.