Divisional Applications
During the prosecution stage of a patent application, where claims are amended in a process of negotiation with the examiner, the desire to file a ‘Divisional Application’ may rise, pertaining to subject matter which is described in the invention specification but will not be protected by the original ‘parent’ application. For example, the examiner may find that the claims define more than one invention, requiring the applicant to choose one of the inventions to be examined now and leaving the others for divisional applications. This is according to the “Unity of invention” requirement, stipulating that the claims of a patent application must relate to a single invention. In simple terms – you can’t get two (or more inventions protected) for the price of one (application). A divisional application may then be filed which keeps the original description and the unexamined claims, while retaining the filing and priority date of the parent application. Alternatively, it may be desired to file completely new claims based on the original description – the consensus amongst the various authorities is however that divisional applications must contain a specific reference to the parent application and may not extend beyond the subject matter disclosed in the parent application. The divisional must however be filed before the parent application, or an earlier divisional, is either granted or abandoned.
Here are examples as why you would seek divisional applications:
· There was more than one invention in the parent application, so you want new application(s) for the additional invention(s).
· Your product does not exactly look as it did when the application was originally filed, so you want a new set of claims that better covers the product you are actually making now.
· The market may be making a version of your product that is not identical to what you are making. It may be possible to get claims that are better focused on the infringer’s product.
· You may not agree with the findings of the Examiner. A divisional is your opportunity to persuade the patent office that you are entitled to broader claims.
· Simply to have an application open at the patent office so you can draft new claims in the event of any unforeseen circumstances. This is particularly popular if you are likely to file an infringement suit or be involved in licensing negotiations or the like in the near future.
Patent Term Extension
Extensions for protection of up to five years may be available in various jurisdictions for patents claiming inventions in certain fields requiring marketing approval and/or subject to regulation, such as but not limited to, medical (e.g., drugs and medical devices), food, feed and agro (e.g., agrochemicals and plants) products that require and/or have received regulatory marketing approval, under certain circumstances.
Extending the duration of a patent requires filing an application to this effect with the patent office in each jurisdiction in which patent term extension is available and desired, within a specified time period from the date of issuance of the marketing approval in that jurisdiction, depending on the jurisdiction, typically within a few weeks. Therefore, please advise us of any developments towards marketing approval of the product subject of the patent(s) to be extended. Should you require additional information regarding this issue, we remain at your service.
Working of Patent
Subject to local regulations, if a patent has not been worked on a commercial scale within a period (usually 3 years) from issuance, a party having a legitimate interest may apply to the Commissioner for the grant of a compulsory license on the ground of non-working (or certain other grounds such as public interest, etc.). However the Court would not grant a compulsory license where it is satisfied that the patent owner justifies the non-use by proving legitimate reasons, or if they prove that effective preparations for exploitation have been carried out, or if they justify the lack of manufacture or commercialization by proving the existence of legal obstacles. In certain countries it is possible, however not mandatory, to demonstrate working of the Patent by filing a “Working Statement”, in order to discourage third parties from filing such a request.
In India under the Indian Patent Law, Patentees and Licensees are required to file periodic (every 3 years) Working Statement declaring the commercial use of the Patent during the previous Financial period. If the patent is not worked in India, reasons are required for non-working of the patent to avoid compulsory licensing of the invention, including measurement being taken for working of the Patent. Non-filing of Working Statement does not result in revocation of Patent, however it may result in imposition of fine in India. Furthermore, a Patentee who submits false information is subject to fine and/or imprisonment.
Disclaimer: The information provided on this webpage does not constitute legal advice and is intended for general informational purposes only. Information on this webpage may not reflect the most up-to-date legal developments or other information. The webpage contains links to other third-party websites for convenience purposes only. Ehrlich Group assumes no responsibility or liability for any errors or omissions in the content of this page.