Divisional Patent Applications: Patent Application Types and Strategies – Part 7

Much like a continuation patent application, a divisional patent application is a patent application that includes the same disclosure as the parent application and claims priority to the parent application.  The difference between the applications is that a divisional application includes claims from the parent application that a patent examiner indicated were different enough from the other claims in the parent application to require separate searching and negotiation.  This indication occurs in what is called a “restriction requirement.”  When a restriction requirement is issued in a patent application, the applicant generally selects one of the groups of claims the examiner has indicated requires separate prosecution.  The unselected groups are then canceled from the application.  The applicant may immediately file one or more divisional applications to prosecute those previously unselected claims, or may wait until some later point.  The divisional patent must, however, be filed during pendency of the parent application or a child application.  Additional claims may also be added to a divisional application if desired, but addition of other claims may have an affect on prosecution.

Divisional patent applications can be used to: 1) prosecute claims previously restricted from a parent application by a restriction requirement; 2) maintain pendency of an application after claims in the parent application have been allowed; and 3) prosecute additional claims not previously submitted in the parent application but, nonetheless, directed at an invention disclosed in the parent application that were restricted by the examiner.  There are also other strategic uses for divisional applications, but these are the main ones.  Divisional applications expire 20 years from the priority filing date of their parent application.