Share on Facebook
Share on Twitter
Share on LinkedIn
By J.D. Houvener
Patent Attorney and Founder

Think back elementary school do you remember long division okay don’t worry I’m not gonna give you a homework assignment but we are going to be talking about divisionals okay stay tuned today I’m gonna be helping you better understand what a divisional patent application is and how you can make it work for you and I’m gonna teach you all the ins and outs to understanding how to take advantage of this really cool part of the patent process hi everyone I’m JD Hoover USPTO patent attorney CEO and Managing Partner here at bold patents law firm today I’ll be talking about helping you understand what a divisional patent application is when you file a patent application at the USPTO you’ve got to know of course what kind of application you’re filing you’ve likely heard of utility design or even plant patent applications and I’ve talked about them on videos and have plenty blog articles as well if you’re new to our content I encourage you to go to bold IP comm to check those out today when you’re talking about divisionals a divisional application is only for utility patent application and it’s when the inventor files the non-provisional patent application that an examiner will say at some point early on in their examination you know what this looks like there’s more than one invention here and the examiner says you’ve got to select which invention you want to proceed with what’s called prosecution because the examiner has as their first job is this okay this is the invention that I’ve been submitted how can I do my job most efficiently and they’re only allowed of course one invention per patent and so if there’s more than one invention articulated in your claim scope or with what you submitted to the Patent Office they will make you select one let’s say you have three inventions or the examiner has split it off into three species and you’ve got to select which species is going to move forward as your main non-provisional patent application those other two that are unselected right unelected officially you can then file was called divisional applications for those other claims sets and that’s called that’s a divisional meaning you use the same exact specification and oftentimes the same drawings and you you basically redo that the claim scope of your twenty claims using that what was not elected so now you’ve got at least two parallel running applications you’ve got that core non provisional application that you elected and now you’ve got this divisional application that is now claiming the other invention but it’s related to the full spec and the written description that you had before let’s make sure this all lines up right you’ve done the preliminary work of filing a provisional patent application that’s the first application you submit you’ve gotten patent pending you’ve waited a full year and then you filed your non provisional that’s who was submitted to the Patent Office so that non provisional like I mentioned before it gets a restriction requirement and it restricts you to elect one species you make that one election and you’ve now filed a divisional as well and now you’ve got those two parallel applications you could continue to file a divisional for the other the third species so now you’ve got three species moving forward in prosecutions now each of those divisionals actually has its own as a life of its own meaning it’s an original what’s called a parent patent application as we’ll talk in other videos and other blog articles there there are what’s called continuation applications those are also called children applications where they will spur off of and have other other embodiments or other versions of the invention that come from them so just a recap divisionals our parent applications so in this example i mentioned there are there are actually three will become three parent applications that will each all proceed through the patent office they will then make their way through get their own office action rejections or objections and you’ll need to then if you want to file continuation or continuation and impart applications to make those even more full developing your patent portfolio so if you want to ask more questions about divisionals if you think you’ve got a restriction office action response do you need help with we’re here to help we’re very familiar with working with examiner’s and selecting the right species that we think you’ll will move the needle in the market and give you the broadest rights possible what’s nice about divisionals is that you also have the ability to file them later meaning you don’t have to choose to file a divisional right when you get that restriction so let’s go back to the example I mentioned earlier where you filed a none provisional the examiner looks at it and says now you’ve actually got three inventions here and you elect the one species the other two you don’t need to file the divisional until it actually gets issued all right so that can be one two sometimes three years down the road so a good strategy just so instead of spending all that money and filing these two divisionals covering all three inventions you can wait you can wait you know maybe a year or two to see if it’s actually having success in the market right your original species that you elected you would likely want to do some beginning marketing meaning generate a prototype or you get some alpha or beta testers out see how it’s doing if you’ve gotten good feedback and it’s taking off I think it would make sense then of course to invest in those divisional those additional claim elements to get as much as you can from that original invention that you filed so hope this was enlightening I hope we now understand a little more about what a divisional patent application is and how it relates to the non provisional cor filing and your eventual patent claim scope if you have any more questions please feel free to leave a comment below or reach out to us at bold IP comm there you can book your free no cost consultation and schedule a call with us you can also get a copy of my book bold ideas the inventors guide to patents I’m your host JD who Vener hope y’all have had a wonderful time watching this show please stay tuned and go big go bold


About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at