Divisional Practice in the BRICs and other Countries – Part 2 of a 9-Part Series

This is Part 2 of a nine-part series examining divisional practice in the BRIC as well as several non-BRIC countries. Click here to view Part 1.

Divisional Practice in Brazil

Time Period for Filing a Divisional 

A divisional application can be filed at any time up until the end of examination.  The “end of examination” occurs when:

1.  An Examiner issues a conclusive (“final”) Office Action rejecting the claims as not patentable; or

2.  Thirty days prior to the publication of the conclusive Office Action, such as a rejection decision or the allowance of the application (each conclusive Office Action is published in the Official Gazette (the time period for when such publication will occur cannot be predicted)),

Whichever occurs last.

Because determining the exact date of the “end of examination” is somewhat complex, 2 examples will be given.

Example 1:  An Examiner issues a conclusive Office Action on January 9, 2013.  The conclusive Office Action is published in the Official Gazette on January 31, 2013 (30 days prior to the publication of the conclusive Office Action is January 1, 2013).  Under these facts, the end of examination is January 9, 2013 (the date the Examiner issued the conclusive Office Action since this occurred last).  Therefore, the time period for filing a divisional application expired on January 8, 2013, well before the Applicant even knew that it’s application had been finally rejected.
Example 1

Example 2:  An Examiner issues a conclusive Office Action on January 9, 2013.  The conclusive Office Action is published in the Official Gazette on February 11, 2013 (30 days prior to the publication of the conclusive Office Action is January 11, 2013).  Under these facts, the end of examination is January 11, 2013 (the date 30 days prior to the publication of the conclusive Office Action in the Official Gazette).  Therefore, the time period for filing a divisional application expired on January 11, 2013, again, likely well before the Applicant even knew that it’s application had been finally rejected.

Example 2

Furthermore, once an application is allowed by an Examiner, it is no longer possible to file a divisional application.  Therefore, because it is not possible to predict when an Examiner will allow an application or issue a conclusive Office Action, Applicants should consider filing one or more divisional applications when requesting examination or when responding to a first Office Action or shortly thereafter.

Claims of a Divisional Application and Double Patenting

The claims of a parent and divisional application cannot be identical as this creates an issue of double protection or double patenting.  Additionally, the subject matter of the claims in a divisional application is restricted to the subject matter of the claims contained in a parent application pending up until the time that a request for examination is filed in the parent application.  In other words, new categories of claims or embodiments not included in the claims of a parent application before a request for examination is filed will not be accepted by National Institute of Industrial Property (INPI) in a divisional application.  For example, if a parent application contained claims for a first embodiment at the time a request for examination is made, a divisional application cannot contain claims to a second embodiment.  Alternatively, if a parent application contained process claims at the time a request for examination is made, a divisional application cannot contain claims to a composition or product.

As alluded to above, INPI is currently objecting to divisional applications that contain new categories of claims and/or new embodiments that were not included in the claims of a parent application before the filing of the request for examination in the parent application.  It is INPI’s position that the set of claims in a divisional application must be restricted to the subject matter of the claims pending in the parent application up until the time that a request for examination is filed in accordance with the provisions of Article 32 of the Brazilian Industrial Property Law (Article 32 allows an applicant to make claim amendments and add additional claims up until the date that a request for examination is filed provided that any amendments or new claims do not exceed the subject matter originally disclosed in the application).  Therefore, it is very important for Applicants to include at least one claim for each embodiment in a parent application before filing a request for examination in order to enable the filing of a future divisional application.

Requirements for Filing a Divisional

According to Article 26 of the Brazilian Industrial Property Law, a patent application can be divided into two or more applications:

1.   Ex officio by INPI when technical examination reveals that the claims are complex or contain a group of inventions that comprise more than one inventive concept (namely, the claims lack unity of invention); or

2.  At the request of the Applicant up until the end of the examination.

When filing a divisional, a copy of the specification, abstract, drawings, a new set of claims and a power of attorney must be submitted.  The title of the application and the abstract can be amended to better define the subject matter being protected.  In addition, a divisional application must include a specific reference to the parent (original) application and cannot contain subject matter that exceeds that disclosed in the parent application.  The reference to the parent application can be included in the specification after the title and should include the application number and filing date of the parent application.  For example, the specification of the divisional application can be amended to include the following cross-reference: “Divided from BR ___              filed on ____ / ____ / ____;”

All official fees (namely, filing fees, examination fees, annuities and the fee(s) for claiming priority, if any) must be paid at the time of filing of a divisional application in order to place the divisional application on the same administrative prosecution level as the parent application.

The filing fees for a divisional application are the same as the fees for an originally filed patent application.  Moreover, the examination fee for a divisional application depends on the total number of claims and increases substantially if an application contains a large number of claims.   Specifically, after the first 10 claims, there are three ranges of fees for claims (namely, for claims 11-15, claims 16-30 and claims 31 and on).  The claim fees increase with each range until claim 31.  After claim 31, the price per claim remains the same.

Examination of Divisional Applications

According to Article 27 of the Brazilian Industrial Property Law, a divisional application will receive the same filing date as well as the benefit of any priority claim made in a parent application.

Divisional applications are not given any priority status in terms of examination by INPI.  Typically, in many instances, what occurs is that the Examiner will examine both the parent and divisional applications simultaneously and publish Office Actions in both applications since it is necessary for the Examiner to analyze whether the set of claims in the divisional application are in accordance to the provisions of Article 32 of the Brazilian Industrial property Law.

This post was written by Lisa Mueller and Silvia Moreira Taketsuma Costa of Dannemann Siemsen.

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