Divisional Application

37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other

applications.

*****

(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.

*****

(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)

)

pplication, 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.

*****

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)

d 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 § 211

et 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

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)

-

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 §

211

et 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.