1.0 Introduction
The following sections describe the administrative requirements regarding the filing of a divisional application.
A divisional application is a separate patent application which is divided from an original application where the original patent application describes more than one invention. The divisional application benefits from the same filing date as the original application.
1.1 Meaning of "original application"
In accordance with subsection 36(4) of the Patent Act, a divisional application is deemed to be a separate and distinct application under the Act, to which the Act's provisions apply as fully as may be.
The Office takes the position that a divisional application may itself be considered an original application under section 36 of the Patent Act for the purposes of the filing of further divisional applications.
Thus, if a first application (the "grandparent" application) leads to a first divisional application (the "parent" application), a further divisional application (the "child" application) may be filed on the basis of either the parent or the grandparent application.
2.0 Filing requirements
In order to file a divisional application, the applicant must meet the requirements in section 89 of the Patent Rules on the presentation date set out in section 103 of the Patent Rules and as described in the paragraph below.
The requirements to establish a presentation date are similar to the requirements to establish a filing date of a regular application:
- An explicit or implicit indication that the granting of a patent is sought;
- Information allowing the identity of the applicant to be established;
- Information allowing the Commissioner to contact the applicant; and
- A document that on its face, appears to be a description.
Unlike a regularly filed application, the description for a divisional application, or the document that on its face appears to be a description, must be in English or French (subsection 15(1) of the Patent Rules).
On the presentation date, an application for a divisional application must also meet the requirements set out in section 89 of the Patent Rules. The requirements are that:
- the application contains a petition that includes a statement to the effect that the application is a divisional application that results from the division of an original application filed in Canada and the petition identifies that original application number;
- the applicant, or if there are joint applicants, at least one of the joint applicants, was an applicant of the original application at any time during the period beginning on the filing date of the original application and ending on that presentation date;
- the application contains one or more claims; and
- if the applicant of the original application is required, under subsection 15(2) or (3), to provide a translation in respect of that application, that applicant has provided the translation to the Commissioner.
2.1 Application Fee for Divisional
Each divisional application filed requires the applicant to pay the application fee though the fee is not required to establish the filing of a divisional application. If it is not submitted on the presentation date, the Commissioner will send a notice requiring the applicant to pay the fee and the late fee before the end of the three month period after the date of the notice.
2.2 Maintenance Fees for Divisionals
Divisional applications carry their own maintenance fees, separate from the parent application. Maintenance fees will be calculated from the filing date of the original application and are payable at the presentation date of the divisional application. Note that the divisional application has the same filing date as the original application. For example, if a divisional application is filed 40 months after the filing date of the parent application, maintenance fees for the 2nd and 3rd years have to be paid at the presentation date upon filing of the divisional application. If the required maintenance fees are not paid at the presentation date, the Commissioner will send a notice requiring the applicant to pay the maintenance fees and the late fee before the later of two months from the date of the notice or six months from the presentation date.
2.3 Consequence of not meeting section 89 requirements on presentation date
The applicant must meet the requirements in section 89 of the Patent Rules on the presentation date in order for the application to be a divisional application. The Patent Rules do not allow for an application to be a divisional application if the requirements in section 89 are complied with after the presentation date.
Therefore, if an applicant meets the filing date requirements as described in section 2.0 above, but does not meet the requirements for an application to be a divisional application on its presentation date, the presentation date will become the filing date of the application, or in other words, a regularly filed application. If this is the case, the Office will send the applicant a filing certificate for a regular application rather than a divisional application.
If the applicant does not successfully file a divisional application, the applicant may wish to withdraw the regular application and re-file the application as a divisional by meeting the presentation date requirements as well as the section 89 requirements on the same date.
3.0 Deadline for filing a divisional application
A divisional application cannot be filed if the parent application is granted, or if it is abandoned beyond the period of reinstatement. A divisional application may be filed after the parent application is refused, if it is filed within the time prescribed in section 90 of the Patent Rules.
4.0 Actions deemed taken
Various actions taken in respect of the parent application are deemed to be taken in respect of the divisional application if the action is taken before the presentation date of the divisional application.
These are:
- a small entity declaration has been filed
- a request for priority has been made and not withdrawn
- information required under subsection 28.4(2) of the Act has been submitted to the Commissioner in respect of a request for priority
- a copy of a translation of a previously regularly filed application for a patent, or a certificate showing its filing date, has been submitted to the Commissioner
- a copy of a previously regularly filed application for a patent has been made available to the Commissioner in a digital library
- information required by paragraph 93(1)(b) in respect of a deposit of biological material has been submitted to the Commissioner
- a request has been submitted under subsection 95(1)
(section 92 of the Patent Rules)
The Office will ensure that Office records for the divisional application reflect the actions that were taken in respect of the parent application.
5.0 Notices in respect of parent application
If the applicant does not comply with a notice that was sent with respect to the parent application before the presentation date of the divisional application, the notice will continue to apply to the parent application. A divisional application will be assessed for compliance with requirements in the Act and the Rules and will be subject to separate notices, if applicable.
6.0 Open to Public Inspection of Divisional Application
Where a divisional application is filed after the expiry of the 18 month confidentiality period specified in section 10 of the Patent Act of the original application, the application and any documents filed in connection with it shall be open to public inspection immediately upon filing. Note that the confidentiality period of a divisional application is calculated based on the earliest filing date of any previously filed application on which a request for priority is made in respect of the divisional application.