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.

Patent Marking

If the patented article (e.g., product, process or service) is manufactured, it is strongly recommended that the article be marked with the patent number. Not marking the article may affect your rights in the event of an infringement of your patent. The mark must be legible and unconcealed. Traditional marking requires patent numbers to be labeled on a physical article. However, virtual marking allows a company to update its patent details on articles without having to re-label or re-produce a line of articles each time a related patent issues or expires. 

Virtual marking is accomplished by marking the article or packaging/brochure/website with a URL, or web address.

USA

The requirement according to USPTO is by fixing on the article or package a label containing a the word “Patent” or the abbreviation “Pat.”, together with either the number of the patent, or an Internet address associating the patented article(s) with the number of the patent(s).

For example: Patent: https://companyname/patentsandapplications

On the webpage, you are required to associate the patented article with the patent number, to the point that the viewer is able to make the association between the product and the patent number(s) easily. A marked product should be covered by at least one claim in each patent it is associated with. A website that simply lists a firm’s patents without mention of the products each one covers may not constitute ‘association’ between product and patent. In order to correctly associate patents with products, it is recommended to include on the webpage both the product name and the associated patent numbers in a format that makes clear the connection between these two sets of identifiers.

You may use the following format for your virtual patent notice:

Virtual Patent Marking Notice by [COMPANY LEGAL NAME]

The following products are protected by patents in the U.S. and elsewhere for [COMPANY LEGAL NAME]. This website is provided to satisfy the virtual patent marking provisions of various jurisdictions including the virtual patent marking provisions of the America Invents Act and provide notice under 35 U.S.C. §287(a). The following list of products and patents may not be all inclusive. For example, some products listed here may be covered by patents in the United States and elsewhere that are not listed, and other products not listed here may be protected by one or more patents in the United States and elsewhere. The following list of products may be covered by one or more of the following US Patents (you can include “and/or Patent(s) Pending” if you also have a patent application pending):

Product Name Patent Number(s)

[PRODUCT #1 NAME]          [PATENT NUMBER 1]; [PATENT NUMBER 2]; [PATENT NUMBER 3]

[PRODUCT #2 NAME]          [PATENT NUMBER 4]; [PATENT NUMBER 5]; [PATENT NUMBER 6]; [PATENT NUMBER 7]; Patent Pending

Note:

The marking must be substantial and continuous – all (not just some) of the products manufactured should be substantially marked, and the marking should be continuous over the life of the product or the patent (whichever is shorter). One should maintain records of the web page, including records showing that the web page was consistently operational. A marked product should be covered by at least one claim in each patent it is associated with. Periodically review your product and active patent portfolio to make sure the marked product is actually covered by the specific language of your active patent claims and to remove patents that no longer cover the product.

Other examples:

www.nike.com/patentsvirtualmarking

tivo.pactsafe.io/legal.html#patents

www.totani.co.jp/en/patent.html

www.actifio.com/patents

www.bunn.com/patents

www.owenscorning.com/en-us/patents

Other Countries: In other countries, the rules may vary.

EUROPE:

In Europe, marking a product with inapplicable patents (incorrect patent numbers or with patent numbers which are no longer in force in particular jurisdictions) can create liability for false marking. For example in Germany, you CANNOT mark a product with a patent if it is not registered and valid in Germany (you cannot even write “patent pending”), so it should be very clear from the marking if the Patent is registered in Germany or not. For this reason Virtual marking is most beneficial in Europe since maintaining and updating a webpage which displays a listing of the patent(s), validated in certain countries only, for each product is easier than changing the physical labeling of a product or its packaging.

ISRAEL

There are no marking requirements for IP rights in Israel. It is, however, a criminal offence to make false representations as to the existence of an IP right. Section 183(c) of the Israel Patent Law read as follows: “If an infringement was committed after the patent holder or exclusive licensee warned the infringer, then the Court may order the infringer to pay punitive compensation, in addition to the compensation which it adjudged under subsection (b), in an amount that does not exceed that compensation”. Based on Section 183(c) above, if the patented article is manufactured, it is recommended that the product be marked with the patent number, or by way of virtual marking. Not marking the product may affect your rights in the event of an infringement of the patent. It is to be noted that case law deals with what means of warning is required, however patent marking is not mentioned. In addition, punitive compensation will be awarded by the courts only seldom and under exceptional circumstances.

CHINA:

When marking patent marks, the following information shall be indicated:

1) The type of patent in Chinese – PRC Patent is “中国发明专利“. (PRC utility model is “中国实用新型专利“, PRC Design is “中国外观设计专利“).

2) The Patent number.

If marking is done before granting of a patent, it should include the PRC (Patent is “中国发明专利“) and the Application number, as well as the words “patent pending”(which is “专利申请，尚未授权”