What is a divisional patent application?

A divisional patent application is a type of application that is filed after an original nonprovisional patent application (also known as a parent application) has been filed. The divisional patent application is filed to pursue patent protection for features of the invention that was included in the original application but not yet claimed. The divisional application is a separate application from the parent application. It will have its own serial number, and claim set and be examined independently from the parent application.

How do you file a divisional patent application?

To file a divisional application, you typically need to do the following steps:

1. Copy and paste the original nonprovisional patent application including the written description and the drawings into new Word document and PDF files.
2. Prepare a new claim set directed to features of the invention that were already disclosed in the original nonprovisional patent application but weren’t claimed in the parent application.
3. List the serial number and filing date of the parent application in the Application Data Sheet. By doing so, you are indicating that the divisional application claims priority back to the parent application.
4. Optionally, in the first sentence of the patent’s specification, state that the divisional patent application incorporates in by reference the entire contents of the parent application.
5. File the divisional application with the USPTO during the patent pendency of the parent application.

When should you file a divisional patent application?

You should consider filing a divisional patent application if the examiner during the prosecution of the original nonprovisional application or parent application issued a restriction requirement. A restriction requirement is typically raised in an office action in which the examiner states that the claim set is directed to more than one invention and that you, the applicant, must select one for examination.  You can seek patent protection for non-elected inventions in the divisional patent application. If you file a divisional application, in this instance, you would craft and submit claims directed to the non-elected invention.

Even if you didn’t receive a restriction requirement during the prosecution of the parent application, you can prepare and submit claims directed to aspects of the invention which were disclosed in the original application but never claimed.

What is the deadline to file a divisional patent application?

To file a divisional patent application, you must file it during the pendency of the parent application. Put simply, the divisional application when filed and the parent application must be co-pending at the same time.

When do you have to submit the priority claim back to the parent application?

Typically, the priority claim is submitted at the time of filing the divisional application. However, that is not a requirement. You may submit a priority claim as late as four months after the filing of the divisional application or 16 months after the filing date of the earliest priority application.

What are the costs of filing a divisional patent application?

The cost of filing a divisional patent application will depend on a variety of factors, But in the United States, the most important factor is the time required for an attorney to prepare a claim set on the new invention.

In general, the cost of filing a divisional patent application will include the following:

1. The filing fee, Examination fee, and Search fee: Depending on your entity size, these fees will be about $400 to $1600.
2. Attorney’s fees: An attorney must draft a new claim set directed to the non-elected invention or new invention.

What’s the difference between a continuation, divisional and continuation-in-part patent application?

A continuation application is a refiling of a parent application that allows a patent applicant to pursue claims similar to the parent application.

A divisional patent application is the same as a continuation application except that the claims are directed to a different part of the invention instead of the same claims as the parent application.  A divisional patent application can be used to submit claims against a design around as well.

A continuation-in-part (CIP) application is a refiling of the same specification as in the parent application but also includes information about additional features of the invention.  The claims are directed to the additional features.  A CIP does not need to be filed.  Instead, the application can be filed as a stand-alone nonprovisional patent application. The benefit of filing the CIP application is that the patent applicant has only one patent family to manage.  The downside to filing the CIP application is that the patent term of any patent maturing from the CIP application would be shortened.