Patent Attorney and Founder
Think back to 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. I’m gonna teach you all the ins and outs of understanding how to take advantage of this really cool part of the patent process.
Hi, everyone, I’m J.D. Houvener, 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 in videos and have plenty of blog articles as well. If you’re new to our content, I encourage you to go to boldip.com to check those out.
Today, when you’re talking about divisionals, a divisional application is only for utility patent applications. 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.” 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, to say, “This is the invention that I’ve been submitted. How can I do my job most efficiently?” They’re only allowed, of course, one invention per patent. 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, unelected officially, you can then file what’s called divisional applications for those other claim sets, and that’s a divisional, meaning you use the same exact specification and oftentimes the same drawings. You basically redo the claim scope of your 20 claims using that which was not elected.
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 what 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. 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 are what’s called continuation applications, those are also called children applications, where they will spur off and have other embodiments or other versions of the invention that come from them.
So just a recap, divisionals are parent applications. In this example I mentioned, there are actually three that will become three parent applications that will 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 part 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 examiners and selecting the right species that we think 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.
Let’s go back to the example I mentioned earlier, where you filed a non-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. So that can be one, two, sometimes three years down the road. 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 maybe a year or two to see if it’s actually having success in the market. Your original species that you elected, you would likely want to do some beginning marketing, meaning generate a prototype or 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, I 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 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 boldip.com. 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 Inventor’s Guide to Patents.” I’m your host, J.D. Houvener. Hope y’all have had a wonderful time watching this show. Please stay tuned and go big, go bold.