While the revision to the R.O.C. Patent Act implemented on January 1, 2013 relaxed the deadline for filing divisional applications up to 30 days after receiving a decision allowing the original patent application, we continue to suggest that such divisional applications be filed before receiving the allowance decision. One reason for this lies in Article 29 of the Enforcement Rules of the Patent Act, which provides that the claims of a divisional application filed after the original patent application has been allowed should be based on the invention(s) disclosed in the description or the drawing(s), not matter covered by claims already approved in the original patent application. Another reason is that, based on Taiwan's Patent Examination Guidelines, with regard to any divisional application filed after a decision allowing the original patent application, no alteration may be made to the description, claim(s), or drawing(s) of the original patent application that has been approved, and any publication must be made pursuant to the approved contents of the original patent application. Thus, the claims of a divisional application are limited to matter derived from the description or drawing(s) in the original patent application which has not been allowed.
This is particularly important for patent applications which include generic claims and species claims or compounds with general formula(s) and specific compounds. If the species claims or specific compounds are already specifically disclosed and included in the scope of the claims of the original patent application, and a divisional application is filed in consideration of patent strategy, technical licensing, and/or extension of patent term associated with a market approval, it would not be possible to flexibly plan the scope of patent protection for both the original patent application and divisional application due to the limitations imposed by the foregoing regulations. This is especially true if the subject matter in a divisional application falls within the claimed scope of the approved original patent application. In fact, there are precedents for rejection of a divisional application because the applicant could not distinguish the subject matter for division from the scope of the allowed claims of the original patent application. Consequently, it is advisable to file a divisional application before a decision is issued allowing the original patent application.
Insofar as this concerns chemical inventions where the original patent application includes compounds with general formula(s) and commercialized specific compounds, it would be advisable to retain the commercialized specific compounds in the original patent application and secure their approval soon in view of the availability for extension of patent term with the maximum time period. The patent applicant should file a divisional application for compounds with general formula(s) together with other specific compounds. Such an arrangement would enable the applicant to obtain patent protection under a wider range of circumstances.
In Taiwan, a second (or second-generation) divisional application can be filed up to 30 days after receiving a decision allowing the first divisional application, regardless of whether the original patent application is still under examination.
Divisional patent applications can open up more options for patent strategy. In order to pursue patent protection in a more targeted and comprehensive manner, and to obtain a higher degree of protection, applicants should have a clear understanding of the optimal timeframe for filing a divisional application in addition to the extent of patent protection offered.