While the revision to the Patent Act implemented on January 1 2013 relaxed the deadline for filing divisional applications to a maximum of 30 days after receiving a decision allowing the original patent application at the first examination stage, it remains advisable that such 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 inventions disclosed in the description or the drawings, not matter covered by claims already approved in the original patent application. Another reason, based on the Patent Examination Guidelines, is that with regard to any divisional application filed after the decision, no alteration may be made to the description, claims or drawings of the original approved patent application, and any publication must be made pursuant to the approved contents of the original application. Thus, the claims of a divisional application are limited to matter derived from the description or drawings in the original patent application that has not been allowed.

This is particularly important for patent applications which include generic claims, species claims or compounds with general formulas 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 application, and a divisional application is filed in consideration of patent strategy, technical licensing and extension of patent term associated with a market approval, it would be impossible 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 even at the first examination stage.

Insofar as this concerns chemical inventions where the original patent application includes compounds with general formulas and commercialised specific compounds, it is advisable to retain the commercialised specific compounds in the original patent application and secure their approval as quickly as possible, in view of the availability for extension of the patent term with the maximum period. The patent applicant should file a divisional application for compounds with general formulas together with other specific compounds. Such an arrangement will 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 at the first examination stage, 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.

For further information on this topic please contact Shu-Ching Wang at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email (shuchingwang@leeandli.com). The Lee and Li website can be accessed at www.leeandli.com.