Divisional patent application

The divisional patent application is a patent application derived from an earlier application, called the initial or parent application, whose filing date and, where applicable, priority it retains. It allows an invention contained in the initial application to be protected separately. The divisional application is provided for by Article L. 612-4 of the French Intellectual Property Code and Article 76 of the European Patent Convention.

The conditions of the divisional application

First, a divisional application may only be filed while the initial application is still pending. After grant, refusal or withdrawal of the parent application, division is no longer possible. Second, the subject matter of the divisional application must not extend beyond the content of the initial application as filed. Any new matter leads to refusal or invalidity. Third, the divisional application gives rise to the payment of filing and search fees and, before the EPO, of the renewal fees accrued since the initial filing date. The rules are detailed on Légifrance and on the website of the European Patent Office.

The uses of the divisional application

Division is first the answer to an objection of lack of unity of invention. It is also a strategic instrument. The applicant may have a first patent granted quickly on solid claims while keeping, through a pending divisional, the possibility of adapting new claims to competing products that have appeared in the meantime. A chain of divisionals thus maintains uncertainty for third parties throughout the procedure. The practice is lawful but scrutinised, notably in the pharmaceutical sector where it forms part of evergreening strategies.

Key points

In practice, the divisional application must be filed before the closure of the parent procedure, with claims strictly supported by the initial application. In litigation, the defendant systematically checks the absence of added matter and the conformity of the divisional with the original application. The firm acts on these validity questions before the Paris Judicial Court and the UPC, as presented on the page patent nullity action.