On 25 September 2020 the Trademark and Patent Office issued Resolution 59669, which modifies in part the existing patent procedure regulations. The most important changes concern:
- filing divisional applications;
- requesting and responding to substantive examinations;
- modifying pending patent applications; and
- paying modification fees.
Although the amendments are procedural rather than substantial, they may make the patent application process lengthier and more expensive. However, they resolve various issues relating to the filing and scope of divisional applications.
Below is a summary of the most significant changes introduced, along with a comparison of how the new process differs from previous practice.
Divisional patent applications
Applicants may now file divisional patent applications that consist of claims which do not correspond exactly to the text of the claims that are pending in the parental application. In other words, the claims of a divisional application may contain elements of the description that are not included within the parental claims, but do not represent a broadening of the scope of protection. Previously, the text of divisional claims had to be extracted verbatim from the parental application. Applicants may now also include dependent claims, which will be drafted as independent claims within divisional applications.
However, the following prohibitions must be observed:
- Divisional application claims cannot broaden the parental application's scope of protection.
- There must be no overlap between a divisional application's subject matter and the subject matter which remains within the parental application after the division.
- In order to preserve the division between the subject matter of a parental application and its divisional applications, neither may be modified in such a way as to create any overlap.
Where an applicant files a divisional application in response to a substantive examination of the parental application, it must pay:
- a divisional application fee; and
- a substantive examination fee – this is a new obligation.
Applicants may now submit the same description for a divisional application as for the parental application. Previously, applicants had to amend a divisional application description to correspond with its particular subject matter.
Divisional applications may not be further divided. However, applicants may file as many divisional applications as they wish.
Where an applicant modifies an application in response to an office action, it must pay a modification fee. This fee was not due under the previous regulations, given that modifications were compulsory.
The Trademark and Patent Office may also require applicants to pay a new substantive examination fee if it believes that a new examination is necessary following the application's modification, which is likely to be the case where modifications result in previously unexamined subject matter. Previously, new examinations had to be conducted within 18 months of the application date. This time limit no longer exists.
The 18-month limit also previously applied for issuing office actions or requesting the amendment of applications. The Trademark and Patent Office can now require applicants to respond to office actions or amend their applications as many times as necessary.
When responding to an office action, applicants may voluntarily request a new examination, regardless of whether their application has been modified. Applicants must pay an examination fee and may make this request only twice.
