For cost efficiency, the patent applicants should know the unity requirements; meanwhile, it is important to avoid losing the opportunity to file a divisional in the case of lacking unity. There are three patent types in China, invention, utility model, and design. This article is to introduce the unity requirements and divisional strategies for various patent types.   

I. Unity Requirements 

1.1 Invention & Utility Model

As to the unity of invention and utility model, it requires the claims to contain one or more of the same or corresponding special technical features. The term “special technical features” means those technical features that define a contribution that each of the inventions or utility models makes over the prior art. 
 
Here is an example: 
Claim 1: A product X characterized by feature A.
Claim 2: A product Y characterized by feature B.
Claim 3: A product Z characterized by features A and B. 
 
Assuming that there is no product characterized by feature A or B disclosed in the prior art and features A and B are not interrelated, then claims 1 and 2 do not contain any same or corresponding technical features and thus do not have unity. In contrast, feature A of claim 1 is the special technical feature that defines the contribution that the invention makes over the prior art, while claim 3 contains the special technical feature A; therefore, claim 1 and claim 3 contain the same special technical feature and have unity. Similarly, claim 2 and claim 3 contain the same special technical feature B, and thus also have unity.

1.2 Design

In China, there are three situations where the applicant can put multiple designs (up to 10 designs) into one application.
 
i. Similar designs for the same product
 
Multiple similar designs for the same product that are related to the same product and the differences therebetween are subtle could be filed in one application. Generally, the applicant may file a single application with multiple designs for the same product. If the Examiner holds that they are not similar during prosecution, the applicant may delete one or more of them and file the deleted one(s) as one or more divisional applications.

ii. Designs for “Products in Set”
 
The term “Products in Set” means that two or more products belong to the same main class, but are independent of each other. Moreover, these two or more products could be customarily sold or used at the same time, the designs of which have the same concept. The whole design of the set as well as the independent design of each product are all within the scope of protection.
 
For example, a coffee machine set may consist of a coffee cup, a coffee pot, a milk pot, and a sugar pot. If the coffee cup, the coffee pot, the milk pot, and the sugar pot are filed in one application as products in the set, we could seek to protect the coffee cup, the coffee pot, the milk pot, and the sugar pot independently, and also protect the coffee set as a whole.

iii. Designs for “Assembled Product”
 
The term “Assembled Product” refers to a single product consisting of a number of components. However, this approach could not protect each component independently. Take an electronic kettle assembly as an example, it comprises two components, a kettle and a heater. If the designs for the kettle and the heater are filed in one application as an assembled product of the electronic kettle, the competitors who produce either the kettle or the heater would not fall into the protection scope.

II. Timing to File Divisional

Under China’s practice, the applicant may file one or more divisional applications (hereinafter referred to as first-generation divisional) ONLY when the parent case is pending. In particular, a divisional application may be filed (1) no later than two months after receiving a Notice of Allowance of the parent application, (2) within three months of receiving a decision rejecting the parent application, (3) after a request for re-examination of the parent application is filed, (4) within three months of receiving a re-examination decision rejecting the parent application, or (5) during an administrative suit against a re-examination decision of rejection of the parent application.

Nevertheless, there is an exception to the above, that is, a unity rejection is issued in the first-generation divisional. In such a case, the applicant may file divisional applications (hereinafter referred to as second-generation divisional) while the first-generation divisional is pending. 

III. Patent Type of Divisional 

According to Patent Examination Guidelines, the patent type of the divisional shall be the same as that of the parent case. That is to say, the applicant cannot change the patent type when filing a divisional. 

In fact, once an application has been filed before the Chinese Patent Office, the patent type cannot be changed anymore. Therefore, the applicant should decide on the patent type at the time of filing. 

IV. New Matter Issue

According to the Implementing Regulations of the PRC Patent Law, the divisional shall not go beyond the original disclosure of its parent application. 

In practice, the Chinese Patent Office is rather strict with amendments. In a case where the applicant makes an amendment in a divisional, it is desirable to show that the amended contents can be determined from the original disclosure of its parent case directly and unambiguously. The most reliable approach to prove the amended contents can be determined from the original disclosure directly and unambiguously is to show that the amended contents are explicitly set forth in the original disclosure. In addition, technical features that are not directly written in the original application but can be generalized or inferred by persons skilled in the art from the description and/or drawings would likely not be acceptable to the Examiner.

V. Tips

i. Invention & Utility Model 

Given the limited timing to file the divisional, in practice, the applicant may deliberately come up with claims in the first-generation divisional to try to trigger a unity of rejection. If the applicant wishes to file only one divisional application, it should include all the desired claims in it.

Another thing we can do is to file a request for deferred examination in the parent case to drag the pendency of the parent case as long as possible and file divisional applications (possibly get divisional applications issued first) while the parent case is pending. The latency can be one year, two years, or three years. Once a deferment request is made, the applicant cannot withdraw it or request the Chinese Patent Office to start substantive examination before the required period expires. Also, it should be noted that the deferment request may affect the patent term adjustment (PTA) calculation if PTA is determined as applicable when the application matures into a patent.

On the other hand, although patent type changing is not available, in terms of patent protection for structures and shapes of products, China provides a mechanism to file a utility model and an invention application at the same time. The main benefit of this approach is that the patentee can get a utility model patent quickly and choose which one to keep once the invention patent becomes mature to grant. Kindly note that this mechanism does not apply to the national entry application derived from a PCT application. When a PCT application enters China, the Applicant has to choose either an invention or a utility model for entering.

The Chinese Patent Office has set up Patent Prosecution Highway (PPH) programs with many patent offices around the world. Under these PPH programs, the applicant may request PPH based on the claims issued by any of those patent offices. However, to go through the PPH, the pending claims for substantive examination in the Chinese application shall completely correspond with those issued claims. Sometimes, the applicant might not be able to put the parent case on the PPH because the voluntary amendment window for the parent case has been closed when a counterpart is issued. In that case, the applicant may take advantage of the PPH by filing a divisional with those issued claims.

ii. Design

For design applications, if only one design is contained in an initial design application, it is not allowed to file a divisional application based on that initial one. In other words, to file a divisional application, one prerequisite is that the initial design application shall contain multiple designs, falling within one of the above-identified three situations.

Given the very limited protection scope defined by an “Assembled Product” Design, we generally do not recommend filing design applications in such a way just for cost-saving. For the products that are assembled in general, for example, a pen containing a body and a cap, the applicant may consider filing them as “Products in Set” first. Some Examiner might hold that they are NOT “Products in Set” due to their assembly relationship and require changing this application into an “Assembled Product”. We may divide this application into multiple applications by filing divisional(s) for broader and comprehensive protection by then. Depending on the Examiner’s discretion in this regard, nevertheless, such an application could still have a chance to go through the examination and get granted as “Products in Set.”