Newsletter
DIVISIONAL PATENT APPLICATIONS
Article 32 of the Patent Law provides that a patent application which contains two or more inventions may be divided into separate applications. An application for such division must be filed before the re-examination of the original application is rendered, and the examination procedures on the separate applications should commence from the stage of examination on the original application. In response to an application for clarification filed by a practitioner, the Intellectual Property Office (IPO) of the Ministry of Economic Affairs recently released the following opinion:
An application for dividing a patent application into separate applications must be filed before the re-examination of the original application is rendered and while the original application is still pending. Examination of the original patent application and the separate applications should commence from the examination stage already completed for the original application.
If the original application has been approved at the first examination stage, an application for dividing the approved patent application shall not be allowed because there is no subsequent examination for the approved application.
The IPO only explained the requirements for filing divisional applications for patent applications, and did not elaborate on the possibility of dividing granted patents. According to Article 68 of the Patent Law, a patentee may apply to divide his (or her) granted patent if the patent includes two or more inventions. Therefore, patentees who are not able to timely file applications to separate their patent applications may consider dividing their granted patents pursuant to Article 68 of the Patent Law.