Division requests are requests derived from an original application that, at the applicant’s own initiative or at the request of the INPI, undergo a division of the content of its claim framework. division applications intend to enable a patent application to fulfill the Industrial Property Law (LPI) requirements for being granted, thereby aiding in the development of a patent portfolio.
When can a patent application be divided?
The LPI permits, while processing a patent application, its division into one or more separate applications.
This scenario is foreseen by article 26 of the LPI:
“Art. 26. A patent application can be divided into two or more sections at the request of the applicant or ex officio until the examination concludes. The divided application must be provided to comply with the provisions:
- make specific reference to the original order; and
- does not exceed the material disclosed in the original request.
Single paragraph. The division request that does not comply with the provisions of this article will be archived.”
The exam terminates as stated in article 32 of Normative Instruction 30/2013:
“Article 32 of the LPI states that for the purposes of articles 26 and 31, the end of the examination in the first instance is determined by the technician’s conclusive opinion regarding patentability or the thirtieth day preceding the publication of the decision granting, rejecting, or definitively archiving, whichever is later.“
Why divide a patent application?
As required by INPI
Generally, a division application happens when a patent application fails to meet the unity of invention requirement (article 22 of the LPI) and includes two or more inventions that are not related by the same inventive concept. This is the only scenario where an examiner can request the division of the application ex officio.
The definition of the term “inventive concept” is outlined in item 3.99 of Resolution No. 124/2013:
“By a single inventive concept, or unit of invention, it is understood that the various claimed inventions have a technical relationship between them, represented by one or more specific technical characteristics that are the same or correspond for all the claimed inventions.”
Thus, when there are inventions that do not share the same inventive concept, it is understood that these are separate inventions and should be claimed in individual applications.
At the desire of the depositor
The LPI also permits the division to occur at the depositor’s free desire. Typically, this happens with patent applications considered complex, even though the inventions are interrelated. Note that in this case, the depositor does not require to present justification to request the division. For example, an application claiming inventions A, B and C, which are interrelated, the holder understands that, in order to build the patent portfolio, it would be better to separate such inventions. In this way, the holder, of his own free desire, divides inventions A, B and C into three applications, in the original application he maintains invention A, in a first divided application he claims invention B and in a second, he claims invention C.
When is it not allowed to divide a patent application?
Just like every rule, there are some exceptions when it comes to dividing patents. The division will not be accepted if:
- imply mutilating or doubling the protection of the invention or model (article 18 of Normative Instruction 30/2013). When dividing, it is not allowed to remove only some characteristics of a claim (mutilation) or claim a more specific subject matter than what was disclosed in the original request (double protection) or
- divisions of already divided orders are carried out.
Mutilation of the invention
Mutilation can be understood as
“[…] the dividing of essential characteristics into two or more applications, where these characteristics are inextricably linked and essential to the invention in its combined form.”
Thus, if essential characteristics are eliminated, like those in an independent claim, in order to create a divided application, it will be deemed as a mutilation, these characteristics are necessary to define the invention of the original application.
Double protection of the invention
Double protection happens when the same, or a more precise, matter is claimed in a divided application. Specifically, this happens when there is a mere replication of the subject matter claimed in the original request in a division request.
Why is dual protection not permitted?
Double protection is not allowed because if a division request claims a more specific matter than the original request, and there is a counterfeit of the claimed matter in the division request, then the original request will be necessarily counterfeited. Therefore, double protection is not allowed in this case.
What are the requirements for dividing a patent application?
Regarding the requirements that must be observed when filing the division application, it must make specific reference to the original application.
“It is necessary to indicate in both the application form and descriptive report that it is a division and to identify the original request.”
Other than that, the divided order should not include any content beyond the disclosed matter in the original order. Adding new material to the division request is not permitted, as it would breach the provisions of article 32 of the LPI.
If the original application has already undergone examination, division of the application will limit the scope of claims in the divided application to only those matters originally claimed in the original application. As such, adding new categories or expanding subject matter in division application claims will not be allowed as per article 32 of the LPI.
Furthermore, according to article 27 of the LPI, if applicable, a division application will receive the same filing date as the original application and will be entitled to priority benefits.
Furthermore, according to article 28 of the LPI, filing fees and retroactive fees from the procedural stage of the original request will be required for a division request.
“For example, if the division is made during the examination phase of the original application, the divided application is immediately subject to payment of the filing fee, examination fee, and any annual fees due.”
It should be noted that in order to prevent the division application from resulting in double protection, the claims in the split application must be excluded from the original application.
Therefore, dividing applications is a vital tool for modifying an application to increase its chances of being granted and, as a result, assists in building a patent portfolio.
On the other hand, in order to fully benefit from this device when making a division order, it is important to understand all the necessary requirements and details.