201.06 Divisional Application [R-07.2022]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
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- (d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
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- (2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
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A later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application. The divisional application should set forth at least the portion of the earlier disclosure that is germane to the invention as claimed in the divisional application. A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of the third sentence of 35 U.S.C. 121 (see MPEP § 804.01) does not extend to continuation-in-part applications, stating that “the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.” Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-1008 (Fed. Cir. 2008). Thus the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to change the inventorship named in the application if the elected invention is not the invention of all the originally named joint inventors. In such a case, a “divisional” application complying with 35 U.S.C. 120 would be entitled to the benefit of the earlier filing date of the original application. In requiring restriction in an application filed by joint inventors, the examiner should remind applicants of the necessity to correct the inventorship pursuant to 37 CFR 1.48 if an invention is elected and all of the claims to the invention of one or more joint inventors are canceled. See MPEP § 817.
In such scenarios, inventorship overlap required by 35 U.S.C. 120 is met even though at the time of filing of the divisional application, the inventorship overlap was lost as a result of the deletion of a joint inventor in the parent application and filing of only claims invented by that inventor in the divisional application. The overlap of inventorship need not be present on the date the continuing application is filed nor present when the parent application issues or becomes abandoned if the parent application prior to restriction names the inventor or a joint inventor of the divisional application as a joint inventor(s) in the parent application. See MPEP §§ 602.01(c) and 602.09 for further information.
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “divisional” of the provisional application. See 37 CFR 1.78, especially paragraphs (a)–(c), and MPEP § 211et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
It is no longer appropriate to include the U.S. Patent and Trademark Office classification of the divisional application and the status and assigned art unit of the parent application in the application data sheet. See MPEP § 601.05.
Use form paragraph 2.01 to remind applicant of possible divisional status.
¶ 2.01 Possible Status as Divisional
This application, which discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a divisional application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
Examiner Note:
- 1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
- 2. This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.
- 3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “divisional” of the prior application.
A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d). See MPEP § 1504.20.
While a divisional application may depart from the phraseology used in the parent application there may be no departure therefrom in substance or variation in the disclosure that would amount to “new matter” if introduced by amendment into the parent application. Compare MPEP § 201.08 and MPEP § 211et seq.
For notation to be put in the file history by the examiner in the case of a divisional application, see MPEP § 202.