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August 22, 2007


David French writes:

".. a "divisional application'' ..... discloses and claims only an invention or inventions that were disclosed and claimed in a prior-filed application,..."

But see:

"35 U.S.C. 120 Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application."

Is there any doubt that, in order to create the right to file a divisional, it is sufficient to insert a claim to the distinctive invention after filing but before a final office action has issued?

Or must claims to a distinctive invention have been inserted before the examiner issues an election requirement?

This is a very important distinction.

Dear David:

Especially in light of the new rules, I think it is important to have a PTO determination that the invention encompassed by the claims in your divisional are patentably-distinct, and that the only way to be certain of that is to have the Office make the determination by issuing a restriction requirement. Just as an Examiner cannot make you file a Terminal Disclaimer over a related case if two cases are related by one being a divisional of the other, I think it advisable to have the PTO's imprimatur on the "patentably distinct" question. Using your suggestion, I suspect the Office would term this a "voluntary divisional" and deprive you of the benefit of a divisional rather than a continuation filing.

So I would be sure to have all the claims there initially, and I would also file a suggestion for restriction requirement paper just in case.

Thanks for the comment.

The comments to this entry are closed.

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