China: Divisional Patent Application Practice Change

The State Intellectual Property Office of the People’s Republic of China has officially published revised Guidelines for Patent Examination that become effective as of July 1, 2006. The revised Guidelines include a significant practice change with regard to the filing of divisional patent applications. According to the revised Guidelines the filing of divisional patent applications will be restricted compared to current practice. Prior to July 1, 2006, a divisional patent application can be freely filed based on another divisional patent application. As of July 1, 2006, the filing of a divisional patent application based on another divisional patent application will be only be allowed in two fact situations:

1. the originally filed parent patent application is still pending and either (i) it has not received a notice of allowance or (ii) where a notice of allowance for the originally filed parent patent application has been received, the divisional patent application is filed within two months from receipt of the notice of allowance, or

2. the divisional application is filed in response to a unity of invention rejection or requirement made by the patent Examiner.

This change will clearly limit the ability of patent applicants to chain together a series of divisional patent applications. But the door is still open, for a very short period of time, to file divisional applications under the current practice.