Divisional patent application

[w***@aol.com]

When you file a divisional application, how do you deal with the
claims? Do you present the claims relevant to the divisional and
withdraw or cancel the remaining claims, or do you only include the
relevant claims renumbered from 1 to N?

Thank you in advance ...

[Steve Marcus]

Post by w***@aol.com
When you file a divisional application, how do you deal with the
claims? Do you present the claims relevant to the divisional and
withdraw or cancel the remaining claims, or do you only include the
relevant claims renumbered from 1 to N?
Thank you in advance ...

Present the claims to the invention relevant to the divisional invention.
You number them 1 to N, but there's no need to cancel or withdraw the claims
from the parent application. The divisional is a new, stand-alone
application. You do need to claim benefit of the parent: "This application
is a divisional of of application number NN/nnn,nnn, filed on Month, Day,
Year and now (status, i.e. abandoned or US Patent No. N,nnn,nnn)." If the
divisional is still pending (neither abandoned nor issued as a patent, the
above sentence ends after the filing date of the parent. This sentence is
the first sentence of the specification.

Steve

[Alun L. Palmer]

Post by Steve Marcus

Post by w***@aol.com
When you file a divisional application, how do you deal with the
claims? Do you present the claims relevant to the divisional and
withdraw or cancel the remaining claims, or do you only include the
relevant claims renumbered from 1 to N?
Thank you in advance ...

Present the claims to the invention relevant to the divisional
invention. You number them 1 to N, but there's no need to cancel or
withdraw the claims from the parent application. The divisional is a
new, stand-alone application. You do need to claim benefit of the
parent: "This application is a divisional of of application number
NN/nnn,nnn, filed on Month, Day, Year and now (status, i.e. abandoned
or US Patent No. N,nnn,nnn)." If the divisional is still pending
(neither abandoned nor issued as a patent, the above sentence ends
after the filing date of the parent. This sentence is the first
sentence of the specification.
Steve

There are other ways of claiming the priority from the parent application,
but what Steve said works, and he is at the Patent and Trademark Office.
You're best to take his advice.

As for the claims, though, the best way is just replace the old claims with
the new ones when you prepare the divisional, and number them beginning at
one, which is also what Steve says. If, for example, they were claims 11-20
in the parent application you can renumber them 1-10 in the divisional, or
WHY. Easily done wth modern word processing.

It used to be common to submit an exact copy of the parent application
including the original claims, accompanied by a separate preliminary
amendment that just cancelled the claims that were elected in the parent,
but this is not recmmended anymore. Some people still do it, by which I
mean there are still law firms doing this, but there are reasons not to.

Patent applications are now published after 18 months, and the patentee has
rights to a reasonable royalty for the period between publication and
issue, but only if it issues as a patent, and only for claims that appear
in both the published application and the issued patent. The claims that
appear in the published application are the ones you file, and if you do
things the old way they will be the claims of the parent application, which
is not what you want. In some cases it will make no difference, but in
others it might.

Alun Palmer, Patent Agent

[w***@aol.com]

Post by Alun L. Palmer

Post by Steve Marcus
The divisional is a
new, stand-alone application. You do need to claim benefit of the
parent: "This application is a divisional of of application number
NN/nnn,nnn, filed on Month, Day, Year

It used to be common to submit an exact copy of the parent application
including the original claims, accompanied by a separate preliminary
amendment that just cancelled the claims that were elected in the parent,
but this is not recmmended anymore. Some people still do it, by which I
mean there are still law firms doing this, but there are reasons not to.

I read some literature from Nolo which I think is an early 2000s
edition, and it seems to suggest that the divisional has to be "carved
out" of the parent. May be it wasn't supposed to be interpreted
literally, but this seems to imply that you have to copy portions out
of the parent into the divisional and then make modifications,
deletions and additions etc. either directly in the application or via
a preliminary amendment. If you go that route, the changes you have
to make could be substantial, considering that you would likely have
to change the title, abstract, background, objectives, summary and
description etc. to properly reflect the divisional application, which
would create a bit of a mess.

If it is a new and standalone application as Steve has pointed out, I
think it would be a lot cleaner to prepare it mostly from scratch
including new drawings and claims, and where feasible, keep some
parts as they appear in the parent. It seems, the key consideration
is to claim the benefit of the parent and maintain its scope.

Am I on the right track?

[Tim Jackson]

Post by w***@aol.com
If it is a new and standalone application as Steve has pointed out, I
think it would be a lot cleaner to prepare it mostly from scratch
including new drawings and claims, and where feasible, keep some
parts as they appear in the parent. It seems, the key consideration
is to claim the benefit of the parent and maintain its scope.
Am I on the right track?

You're not allowed to add any new material that didn't appear in the
parent. And it's not desirable to omit any (you never know when it
might be needed).

If you prepare new drawings, you're very likely to do one or the other,
perhaps inadvertently. So it's best to keep the drawings unchanged.

The same goes for the description. So only the claims will change.

In European practice you might adapt the description to the new claims,
but that's not normally done in US practice. Even in Europe, I would
not adapt the description until later on - if you accidentally omit
something when the divisional is filed, it can't be put back in later.

[Emma Anne]

Post by Tim Jackson

Post by w***@aol.com
If it is a new and standalone application as Steve has pointed out, I
think it would be a lot cleaner to prepare it mostly from scratch
including new drawings and claims, and where feasible, keep some
parts as they appear in the parent. It seems, the key consideration
is to claim the benefit of the parent and maintain its scope.
Am I on the right track?

You're not allowed to add any new material that didn't appear in the
parent.

Or rather you can, but then it is not a divisional but a CIP.

[Steve Marcus]

Post by w***@aol.com

Post by Alun L. Palmer

Post by Steve Marcus
The divisional is a
new, stand-alone application. You do need to claim benefit of the
parent: "This application is a divisional of of application number
NN/nnn,nnn, filed on Month, Day, Year

It used to be common to submit an exact copy of the parent application
including the original claims, accompanied by a separate preliminary
amendment that just cancelled the claims that were elected in the parent,
but this is not recmmended anymore. Some people still do it, by which I
mean there are still law firms doing this, but there are reasons not to.

I read some literature from Nolo which I think is an early 2000s
edition, and it seems to suggest that the divisional has to be "carved
out" of the parent. May be it wasn't supposed to be interpreted
literally, but this seems to imply that you have to copy portions out
of the parent into the divisional and then make modifications,
deletions and additions etc. either directly in the application or via
a preliminary amendment. If you go that route, the changes you have
to make could be substantial, considering that you would likely have
to change the title, abstract, background, objectives, summary and
description etc. to properly reflect the divisional application, which
would create a bit of a mess.
If it is a new and standalone application as Steve has pointed out, I
think it would be a lot cleaner to prepare it mostly from scratch
including new drawings and claims, and where feasible, keep some
parts as they appear in the parent. It seems, the key consideration
is to claim the benefit of the parent and maintain its scope.
Am I on the right track?

You will want to avoid introducing any new matter (disclosure not supported
by the parent application) into the divisional application. Presumably, the
divisional is being filed as a result of a restriction requirement that
identified a claim or claims in the parent as being for a patentably
distinct invention than another set of claims. You can actually photocopy
the original application except for the claims, including the original
declaration (assuming that it was not criticized as being in any way
deficient) and and original drawings (same assumption) and file them
together with a new set of claims that includes the "restrictred out"
claims, renumbered to begin with claim 1. You could also add additional
claims as well.

The divisional application is "carved out" of the original in the sense that
the original disclosed and claimed both inventions, but ended up being
limited to claims to only one invention. The divisonal is best filed as a
duplicate of the original, but including only a set of claims to "the other"
invention.

But don't take my word for it; why don't you make use of the PTO website??
(We've been down that road before.)

See: http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r7_0600.pdf


"602.05(a)Oath or Declaration in Continuation and Divisional Applications
[R-7]

A continuation or divisional application filed under 37 CFR 1.53(b) (other
than a continuation-in-part (CIP)) may be filed with a copy of the oath or
declaration from the prior nonprovisional application. See 37 CFR
1.63(d)(1)(iv).

A copy of an oath or declaration from a prior application may be submitted
with a continuation or divisional application even if the oath or
declaration identifies the application number of the prior application.
However, if such a copy of the oath or declaration is filed after the filing
date of the continuation or divisional application and an application number
has been assigned to the continuation or divisional application (see 37 CFR
1.5(a)), the cover letter accompanying the oath or declaration should
identify the application number of the continuation or divisional
application. The cover letter should also indicate that the oath or
declaration submitted is a copy of the oath or declaration from a prior
application to avoid the oath or declaration being incorrectly matched with
the prior application file. Furthermore, applicant should also label the
copy of the oath or declaration with the application number of the
continuation or divisional application in the event that the cover letter is
separated from the copy of the oath or declaration.

A copy of the oath or declaration from a prior nonprovisional application
may be filed in a continuation or divisional application even if the
specification for the continuation or divisional application is different
from that of the prior application, in that revisions have been made to
clarify the text to incorporate


amendments made in the prior application, or to make other changes provided
the changes do not constitute new matter relative to the prior application.
See 37 CFR 1.52(c)(3). If the examiner determines that the continuation or
divisional application contains new matter relative to the prior
application, the examiner should so notify the applicant in the next Office
action. The examiner should also (A) require a new oath or declaration along
with the surcharge set forth in 37 CFR 1.16(f); and (B) indicate that the
application should be redesignated as a continuation-in-part."

Steve

[w***@aol.com]

Post by Steve Marcus
You will want to avoid introducing any new matter (disclosure not supported
by the parent application) into the divisional application. Presumably, the
divisional is being filed as a result of a restriction requirement that
identified a claim or claims in the parent as being for a patentably
distinct invention than another set of claims. You can actually photocopy
the original application except for the claims, including the original
declaration (assuming that it was not criticized as being in any way
deficient) and and original drawings (same assumption) and file them
together with a new set of claims that includes the "restrictred out"
claims, renumbered to begin with claim 1. You could also add additional
claims as well.
The divisional application is "carved out" of the original in the sense that
the original disclosed and claimed both inventions, but ended up being
limited to claims to only one invention. The divisonal is best filed as a
duplicate of the original, but including only a set of claims to "the other"
invention.
But don't take my word for it; why don't you make use of the PTO website??
(We've been down that road before.)
See: http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r7_0600.pdf
"602.05(a)Oath or Declaration in Continuation and Divisional Applications
[R-7]
A continuation or divisional application filed under 37 CFR 1.53(b) (other
than a continuation-in-part (CIP)) may be filed with a copy of the oath or
declaration from the prior nonprovisional application. See 37 CFR
1.63(d)(1)(iv).
................
Steve
--

That makes sense. Thank you very much.

[Steve Marcus]

Post by Alun L. Palmer

Post by Steve Marcus

Post by w***@aol.com
When you file a divisional application, how do you deal with the
claims? Do you present the claims relevant to the divisional and
withdraw or cancel the remaining claims, or do you only include the
relevant claims renumbered from 1 to N?
Thank you in advance ...

Present the claims to the invention relevant to the divisional
invention. You number them 1 to N, but there's no need to cancel or
withdraw the claims from the parent application. The divisional is a
new, stand-alone application. You do need to claim benefit of the
parent: "This application is a divisional of of application number
NN/nnn,nnn, filed on Month, Day, Year and now (status, i.e. abandoned
or US Patent No. N,nnn,nnn)." If the divisional is still pending
(neither abandoned nor issued as a patent, the above sentence ends
after the filing date of the parent. This sentence is the first
sentence of the specification.
Steve

There are other ways of claiming the priority from the parent application,
but what Steve said works, and he is at the Patent and Trademark Office.
You're best to take his advice.
As for the claims, though, the best way is just replace the old claims with
the new ones when you prepare the divisional, and number them beginning at
one, which is also what Steve says. If, for example, they were claims 11-20
in the parent application you can renumber them 1-10 in the divisional, or
WHY. Easily done wth modern word processing.
It used to be common to submit an exact copy of the parent application
including the original claims, accompanied by a separate preliminary
amendment that just cancelled the claims that were elected in the parent,
but this is not recmmended anymore. Some people still do it, by which I
mean there are still law firms doing this, but there are reasons not to.
Patent applications are now published after 18 months, and the patentee has
rights to a reasonable royalty for the period between publication and
issue, but only if it issues as a patent, and only for claims that appear
in both the published application and the issued patent. The claims that
appear in the published application are the ones you file, and if you do
things the old way they will be the claims of the parent application, which
is not what you want. In some cases it will make no difference, but in
others it might.
Alun Palmer, Patent Agent

Alun, I've retired from PTO as of 1/2/2009. However, I haven't forgotten
much (yet).

Steve

[Emma Anne]

Post by Steve Marcus
Alun, I've retired from PTO as of 1/2/2009. However, I haven't forgotten
much (yet).
Steve

Congrats!

[Steve Marcus]

Post by Emma Anne

Post by Steve Marcus
Alun, I've retired from PTO as of 1/2/2009. However, I haven't forgotten
much (yet).
Steve

Congrats!

Thanks!

Now are the congratulations for retiring, or for not yet forgetting much?
:)

Actually, I've retired from PTO, but now I'm in a firm, practicing from the
other side of the street.

Steve

[Emma Anne]

Post by Steve Marcus

Post by Emma Anne

Post by Steve Marcus
Alun, I've retired from PTO as of 1/2/2009. However, I haven't forgotten
much (yet).
Steve

Congrats!

Thanks!
Now are the congratulations for retiring, or for not yet forgetting much?
:)
Actually, I've retired from PTO, but now I'm in a firm, practicing from the
other side of the street.

Well, it *was* for retiring, but now that I hear you are working for a
firm it's now for not forgetting much.

[Alun L. Palmer]

Post by Steve Marcus

Post by Emma Anne

Post by Steve Marcus
Alun, I've retired from PTO as of 1/2/2009. However, I haven't
forgotten much (yet).
Steve

Congrats!

Thanks!
Now are the congratulations for retiring, or for not yet forgetting much?
:)
Actually, I've retired from PTO, but now I'm in a firm, practicing from
the other side of the street.
Steve

That should be interesting for you. It's a different perspective, I think
you'll find.

[w***@nobodyhome.org]

Alun, I've retired from PTO as of 1/2/2009....

Congratulations on your escape!

-- Larry

[Steve Marcus]

On Mon, 9 Feb 2009 19:50:51 -0500, "Steve Marcus"

Alun, I've retired from PTO as of 1/2/2009....

Congratulations on your escape!
-- Larry

Thanks, Larry. The jury is still out, however, on the question of whether
I've given up the frying pan for the fire. I imagine that time will tell.

Steve

[Alun L. Palmer]

Post by Steve Marcus

Post by Alun L. Palmer

Post by Steve Marcus
..

Post by w***@aol.com
When you file a divisional application, how do you deal with the
claims? Do you present the claims relevant to the divisional and
withdraw or cancel the remaining claims, or do you only include the
relevant claims renumbered from 1 to N?
Thank you in advance ...

Present the claims to the invention relevant to the divisional
invention. You number them 1 to N, but there's no need to cancel or
withdraw the claims from the parent application. The divisional is a
new, stand-alone application. You do need to claim benefit of the
parent: "This application is a divisional of of application number
NN/nnn,nnn, filed on Month, Day, Year and now (status, i.e. abandoned
or US Patent No. N,nnn,nnn)." If the divisional is still pending
(neither abandoned nor issued as a patent, the above sentence ends
after the filing date of the parent. This sentence is the first
sentence of the specification.
Steve

There are other ways of claiming the priority from the parent
application, but what Steve said works, and he is at the Patent and
Trademark Office. You're best to take his advice.
As for the claims, though, the best way is just replace the old claims
with the new ones when you prepare the divisional, and number them
beginning at one, which is also what Steve says. If, for example, they
were claims 11-20 in the parent application you can renumber them
1-10 in the divisional, or WHY. Easily done wth modern word
processing.
It used to be common to submit an exact copy of the parent application
including the original claims, accompanied by a separate preliminary
amendment that just cancelled the claims that were elected in the
parent, but this is not recmmended anymore. Some people still do it,
by which I mean there are still law firms doing this, but there are
reasons not to.
Patent applications are now published after 18 months, and the
patentee has rights to a reasonable royalty for the period between
publication and issue, but only if it issues as a patent, and only for
claims that appear in both the published application and the issued
patent. The claims that appear in the published application are the
ones you file, and if you do things the old way they will be the
claims of the parent application, which is not what you want. In some
cases it will make no difference, but in others it might.
Alun Palmer, Patent Agent

Alun, I've retired from PTO as of 1/2/2009. However, I haven't
forgotten much (yet).
Steve

Here's to a long and happy retirement

Alun