The previous article used an illustration to introduce the examination principles applicable to current examination practices regarding the content of divisional applications that exceed the initially disclosed scope. This article will provide an introduction to the specific circumstances involving amendments beyond the initially disclosed scope, as well as an analysis of lessons for initial patent drafting.

3.Current Status of Divisional Application Examinations

Presently, the Chinese Patent Office examines whether or not the content of a divisional application exceeds the scope of the initial application based on the examination principles for amendments beyond the scope that are prescribed in Article 33 of the P.R.C. Patent Law.

In the following two circumstances, the content will normally be considered to have exceeded the scope disclosed in the initial application:

  1. While the content disclosed in a patent description is usually quite specific, once a new technical solution (i.e. a claim in the divisional application) is drafted through a summary of this specific content (or by deleting certain technical content), then as long as the summarized content has not been independently and completely disclosed in the initial description, the new technical solution will likely be rejected on the ground that it exceeds the scope disclosed in the initial application.
  2. Even though a certain technical feature in a divisional application is completely disclosed in the initial description, if a technical solution serving as a claim in the divisional application as a whole was not completely disclosed in the initial description, but was only disclosed as a part of a certain embodiment in the initial description (and this embodiment is further comprised of other technical features), the new technical solution formed by this technical feature will also be considered to have exceeded the scope disclosed by the initial description, and will therefore be rejected.

Consequently, in practice, if a claim in a divisional application is not the technical solution protected by a claim deleted from the initial application (i.e. it was not disclosed in the form of a claim in the initial application), but is instead a technical solution that was not completely disclosed in the initial description, such a divisional application is unlikely to be approved by the patent office.

In addition, it should be noted that “whether or not supported by the description” and “whether or not exceeding the initial scope” are two different concepts. Although a summary of specific technical content disclosed in the initial description is likely to be supported by the initial description, since the scope of such summary is broader than the scope of the specific content of the initial description, it exceeds the scope disclosed in the initial description. The requirement for an amendment to the initial application documents is not that “it must be supported by the initial description”, but that “it cannot exceed the scope disclosed in the initial application”.

4.Suggested Countermeasures in Divisional Applications

Any amendment to application documents (including both the description and the claims) and the content of any divisional application based on the initial application must be subject to the description and the claims in the initial application. Whether or not a new claim in the divisional application exceeds the initially disclosed scope usually depends on whether or not it was completely disclosed in the initial description or claims.

In the example given above, if the applicant hopes to file a divisional application for a specific technical feature in the initial description, and to limit the content of the divisional application to the scope of the initial description and claims, he must file based on the entire technical solution to which the specific technical feature belongs; in other words, he must use the specific embodiment disclosed in the description as an entire technical solution (claim) and file the divisional application on that basis. The scope of protection granted for such a claim, however, will obviously be quite limited, and such protection is almost meaningless.

In order to avoid this circumstance, the author provides the following tips for drafting the initial description:

  1. For a technical solution incorporating several technical features, if some of the features are not essential for the realization of the technical solution, it is advisable to consider as many different combinations of these technical features as possible. The technical solutions composed of these combinations will define different scopes, and it would be better to disclose such technical solutions in the form of a claim in the claims or the description.
  2. In the technical solution incorporating several technical features, if these technical features jointly constitute an entire technical solution (i.e. if they are all essential for the realization of the technical feature), it is advisable to consider inserting an independent technical solution (or embodiment) by describing in detail one of the features therein as the key point (i.e. a distinguishing feature), while offering a summary description of all other features (i.e. at the prior art level). The technical solutions formed thereby will define different scopes, and it would be better to disclose such technical solutions in the form of a claim in the claims or the description.

5.Conclusion

Although the Patent Law provides for divisional applications as a remedy for the circumstance in which the applicant for the patent protection of technology incorporating two or more inventions only petitioned for protection of one invention in the initial application, if the other invention(s) was (were) not summarized in the form of a claim, the applicant may be faced with the embarrassing situation in which the scope of protection of the divisional application is too narrow or the amendment exceeds the initially disclosed scope. Consequently, when drafting the initial application documents (including the description and the claims), other inventions that may be used as subjects in subsequent divisional applications should be disclosed by a means of a summary (i.e. in the form of a claim).