On 1 September 2018, the Intellectual Property Office of the Philippines (“IPOPHL”) issued a Memorandum Circular No. 18-003 setting out the conditions and considerations when filing a divisional patent application in the Bureau of Patents (“BOP”).
According to rules 610 and 611 of the Revised Implementing Rules and Regulations (Revised IRR), an applicant can file a new patent application (divisional application) in respect of any part of the matter contained in the originally filed or first filed parent application (parent ppplication”). The said divisional application is accorded the same filing date as the parent application and has the benefit of any right to priority.
In the Philippines, a parent application may give rise to more than one divisional application and a divisional application (earlier divisional application) may also give rise to one or more further divisional applications -succeeding divisional application(s). The earlier divisional application must be pending at the time the succeeding divisional application is filed.
A “mandatory” divisional application may be filed for inventions that are not elected following a requirement for restriction or as a result of a lack of Unity of Invention rejection in the parent application (rule 604, Revised IRR). It must be filed within four months from the date of election or from the date the requirement for division becomes final. The examiner will explicitly state an indication that the restriction is made final in the next or subsequent office action and the prescribed period of four months shall commence from the mailing date of said office action.
On the other hand, a “voluntary” divisional application may be filed upon the applicant’s own initiative before the parent application is withdrawn or patented, on the condition that the subject matter does not extend beyond the disclosure of the parent application (rule 611, Revised IRR). Under the current practice, there is a final opportunity for filing a voluntary divisional application within one month from the mailing date of a Notice of Allowance.
The divisional application’s term will not extend the 20-year patent protection period reckoned from the filing date of the first filed parent application.
When filing a divisional application, the description must indicate, at the first paragraph of the first page, a statement that the application is a divisional application and an indication of the application number and filing date of the parent application. The claims of a divisional application need not be limited to subject-matter already claimed in the parent application, provided that the subject-matter does not go beyond the content of the parent application.
Related Case Law
Prior to the above-mentioned Circular, the appeal decision by the Office of Director General (“ODG”) of the Intellectual Property Office of the Philippines in Takeda Pharmaceutical Co. Ltd. v Director of Bureau of Patents, 20 July 2018 shed light on the timely filing of a divisional application.
Historical Timeline of the Case
30 July 2002 – The examiner issued an official action that subjected Takeda Pharmaceutical Co. Ltd’s (“appellant”) application (“parent application”) to a restriction requirement.
30 September 2002 – The appellant elected Group 26 for prosecution without traverse and manifested that the divisional application will be filed in due course.
1 June 2004 – The appellant filed a divisional application based on the parent application. Subsequently, the examiner issued an office action denying the claim for priority date as the divisional application had allegedly been filed beyond the four-month reglementary period as prescribed under Section 17 of Republic Act No. 615 (the old patent law).
30 November 2004 – The appellant filed a reply submitting that Section 17 of Republic Act No. 165 did not apply as the application was filed as a voluntary divisional patent application. The appellant’s arguments did not succeed and the earlier finding that the divisional application was not entitled to the claim of priority of the parent application was upheld by the examiner.
9 May 2005 - The appellant requested for the acceptance of its claim of priority but it was denied by the examiner who maintained that the appellant’s divisional application was not a voluntary divisional application.
27 March 2007 – The appellant proposed to amend the claims and requested the examiner to consider its application as a voluntary divisional application as it was filed not as a result of the restriction requirement.
1 February 2008 – A final rejection was issued and thus the appellant appealed to the Director of BOP.
6 November 2013 - The Director of BOP denied the appeal and confirmed the examiner’s final rejection.
Appeal No. 01-2013-0005
The appellant appealed to the ODG on 27 December 2013. The main issue was whether the appellant’s Divisional Application was a voluntary divisional patent application that should be given the same filing and priority date as the appellant’s Parent Application.
The ODG ruled, citing Section 38.2 of the IP Code, that since the appellant’s Parent Application was subjected to a restriction requirement, for the divisional application to claim the filing date of its Parent Application, it “must be filed within four months after the requirement to divide becomes final, or within such additional time, not exceeding four (4) months, as may be granted.”
According to the ODG, the provision on voluntary divisional application only applies if there is no restriction requirement. Otherwise, the applicant is bound by the requirements under Section 38.2 of the IP Code and rule 610 of the Revised IRR.
As a final remark, the ODG opined that “As a privilege granted by the state that amounts to a grant of monopoly, patents should be strictly construed and given only to those inventions that have significantly contributed to existing arts. Innovations that are not anymore new, or which have been disclosed to the public, should not anymore be included in the patent protection. In addition, just like in lawsuits, reglementary period and time limits must be strictly followed, as they are considered indispensable interdictions against needless delays, and for orderly discharge of patent examinations. Procedural rules are not to be belittled or disregarded simply because their non-observance may have resulted in prejudice to a party’s substantive rights.” (Emphasis Added)
Therefore, the appeal was dismissed and the examiner’s final rejection as well as the BOP Director’s decision was affirmed.
In summary, the Memorandum Circular No. 18-003 provides clarity in terms of when one can file a divisional application. It codifies the position adopted by Intellectual Property of the Philippines and provides certainty to applicants who are pursuing divisional patent applications.
A version of this article was first published in the membership journal of the Chartered Institute of Patent Attorneys - see more at http://www.cipa.org.uk/.