[Author: Fanghua Zhou]

Mostly, the examiners examine whether a divisional application for utility model is accepted or not following the examination criteria consistent with those for the examination of a divisional application for invention. But in recent years, the author received several times the Notification that Divisional Application Deemed Not to Have Been Filed issued by the department of utility model examination of the CNIPA. In some cases, the applicants were not satisfied with the administrative action of the above notification and requested for administrative reconsideration, all being rejected. Herein the examination criteria for divisional applications for utility model are elaborated based on an exemplary case where the Notification that Divisional Application Deemed Not to Have Been Filed was issued.

In the subject case, the Notification alleged that the subject divisional application did not conform to Article 42 of the Implementation Regulations of the Chinese Patent Law, and was therefore deemed not to have been filed. The Notification further specified that the two utility models of the original application belonged to one general inventive concept, which complied with Article 31 of the Chinese Patent Law; so the divisional application was not filed in order to overcome the defect of the original application of lacking unity.

The Decision of Administrative Reconsideration stated that: under Article 31.1 of the Chinese Patent Law, Article 42.1 of the Implementation Regulations of the Chinese Patent Law, and Section 3.1 of Chapter 6, Part II of the Guidelines for Patent Examination, the Notification that Divisional Application Deemed Not to Have Been Filed issued by the CNIPA is lawful and should be upheld.

The author disagrees with the grounds and the conclusions of the above Notification and Decision.

First, under Article 31.1 of the Patent Law, an application for a patent for invention or utility model shall be limited to one invention or utility model. Two or more inventions or utility models belonging to a single general inventive concept may be filed as one application.

By this article, it is intended to prescribe that invention(s) or utility model(s) filed as one application should satisfy the unity requirement, so as to avoid a case where the applicant includes multiple inventions or utility models which do not belong to a single general inventive concept in one application, thereby facilitating patent management, search, and examination by the CNIPA. The above article should be interpreted as a limiting condition for filing a divisional application.

Second, under Rule 42.1 of the Implementation Regulations of the Chinese Patent Law, where a patent application includes two or more inventions, utility models, or designs, the applicant may, before the expiration of the time limit provided for in Rule 54, paragraph one of these Implementation Regulations, submit to the patent administration department under the State Council a divisional application; however, where an application for patent has been rejected, withdrawn, or is deemed to have been withdrawn, no divisional application may be filed.

By this article, it is intended to specify the timing for filing a divisional application. That is, the divisional application shall be filed within 2 months from the date of receipt of the Notification to Grant Patent Right issued by the patent administration department under the State Council as specified in Article 54.1 of the Implementation Regulations of the Chinese Patent Law, and where the patent application has been rejected, withdrawn, or is deemed to have been withdrawn, no divisional application can be filed from the patent application in question. However, this rule does not expressly specify or limit other conditions for filing a divisional application.

Further, Section 3.1 of Chapter 6, Part II of the Guidelines for Patent Examination provided “several circumstances to file divisional application”, listing three specific circumstances where the application for patent does not satisfy the utility requirement, and specifies that in these circumstances, the Examiner should invite the applicant to amend the application documents (including to divide the application) to meet the requirement of unity.

Part II of the Guidelines for Patent Examination relates to the substantive examination. Section 3.1 of Chapter 6 of this part prescribes several circumstances during the substantial examination where the Examiner should ask the applicant to amend the application including by filing divisional application, such as “the original claims contain two or more inventions that do not meet the requirement of unity”, “there is no unity between an added or replacing independent claim introduced during amendments to the application and the invention defined in the original claims”, and “one of the independent claims lacks novelty or inventive step, and there is no unity between the other claims”. However, the examination of an application for utility model does not include substantive examination. Also, it is intended by the above article to provide guidance for the examiner in the examination of utility. It should not be interpreted as limiting the filing of divisional applications during the preliminary examination.

In fact, except for the exception provided in Section 5.1.1 of Chapter 1, Part I of the Guidelines for Patent Examination, none of the Chinese Patent Law, the Implementation Regulations of the Chinese Patent Law, and the Guidelines for Patent Examination considers the application having a defect of lacking unity or receiving a notification indicating the defect of lacking unity as an essential condition for allowing the filing of a divisional application from the application in question. The afore-mentioned exception indicates that: in a case where a division application has been filed, and the applicant needs to file a subdivisional application based on the divisional application, if the filing date of the subdivisional application does not comply with the Article 42.1 of the Implementation Regulations of the Chinese Patent Law, the applicant needs to submit a copy of the notification indicating that the divisional application has the defect of lacking unity.

The subject divisional application of the case discussed here does not fall in the circumstances of the above exception, and complies with the relevant provisions of the Chinese Patent Law, the Implementation Regulations of the Chinese Patent Law, and the Guidelines for Patent Examination. Therefore, the administrative actions of issuing the Notification that Divisional Application Deemed Not to Have Been Filed and the Decision of Administrative Reconsideration do not have a legal basis and are made based on improper interpretation of the related laws and regulations.

In addition, the Chinese Patent Law, the Implementation Regulations of the Chinese Patent Law, and the Guidelines for Patent Examination do not differentiate the conditions for filing divisional applications for inventions and utility models; apart from the present case, there has been not one case where the Notification that Divisional Application Deemed Not to Have Been Filed is issued on the grounds that the original application lacks utility through the patent practice of the author in years.

In conclusion, it is our sincere hope that the patent administration department under the State Council reviews the cases in compliance to the related laws and regulations. For questions related to qualifying a patent application such as whether or not a divisional application can be filed, in the current circumstance that the relevant laws and regulations do not differentiate the provisions for inventions and utility models, consistent examination criteria should be adopted for the examination of the two types of applications, so as to reduce the confusion of the public and the applicants, and to reduce the consequent uncertainty in patent practice.