Patent It Yourself - PDF Archive

ChaPter 14 | Your APPLICATION can HAVE CHILDREN | 405
in the same manner as you would for a regular amendment,
as explained in Chapter 13.
Be sure to include all the claims you desire in the amendment,
since the next OA after the RCE is filed may be made
final if the examiner doesn’t cite any new prior art. If you
mailed your RCE, you’ll receive your postcard back with the
filing date of your RCE but no new serial numbers. After
that, you’ll receive the next Office Action.
If the claims that are finally allowed in either an RCE,
continuation, or a divisional application (see Section D,
below) differ significantly from the claims you originally
presented in the parent application, you should file a
Supplemental Declaration (Form 13-3) before or when you
pay the issue fee.
Note that Divisional and CIP applications must be filed
like a regular application under Rule 53(b). They cannot be
filed via an RCE.
D. Divisional Applications
A divisional application or “division” is “a later application
for a distinct or independent invention, carved out of a
pending application and disclosing and claiming only
subject matter disclosed in the earlier or parent application”
(MPEP 201.06). You should file a divisional application
when (1) the PTO decides that two separate or distinct
inventions have been claimed in the parent application (not
permitted, since your filing fee entitles you to get only one
invention examined), (2) you’ve agreed to restrict the parent
application to the set of claims to one of the inventions,
and (3) you want to get a patent on the other, nonelected
invention. You don’t have to file a divisional application
on the other invention, and should do so only if you think
it’s important enough to justify the expense of a separate
application and patent and you think it may be patentable.
Divisional applications are so called because they cover
subject matter that is “divided out” of the parent case.
A divisional application is entitled to the filing date of
the parent case for purposes of overcoming prior art. The
parent application of a divisional application can either
issue as a patent or become abandoned if you feel the parent
is not patentable over the prior art. The divisional must be
filed as a complete new application under Rule 53(b), and,
like the Rule 53(b) continuation application, will receive its
own serial number and filing date for PTO administrative
purposes. A patent issuing on a divisional application
will show the serial number and filing date of the parent
application; this will be the divisional’s effective filing date.
But remember that the divisional application must be filed
while the parent is pending. Also note that you can file a
division of a continuation application, and a continuation of
a divisional application. (Definitely consult an expert if you
get into these murky waters.)
Whether or not you’re abandoning the parent case you’ll
have to proceed under Rule 53(b). To file by mail, send in
a complete copy of the divisional application, including
an Application Transmittal (Form 10-2), Fee Transmittal
(Form 10-3), filing fee, drawings (see below), specification,
claims, and abstract, PAD (Form 10-1), postcard, and
optionally an ADS. Optionally, you may also file a
Preliminary Amendment. Everything should be the same
as if you were filing a completely new application (use the
checklist in Chapter 10), with the following exceptions:
a. Add the following sentence to the specification
under “CROSS-REFERENCE TO RELATED
APPLICATIONS”:
“This is a division of application Ser. Nr. /
, Filed 20 , now abandoned
[or now patent Nr.
[fill in later],
granted
[fill in later].]”
Also you should amend the specification, either
directly on the copy of the specification you file, or
by a Preliminary Amendment. Remove any matter
directed exclusively to the embodiment or invention of
the parent case, and make any editorial amendments
you desire or which you’ve made in the parent case.
b. Complete the Patent Applica tion Transmittal (Form
10-2). Fill out box 18 to refer to the parent case and to
indicate you’re filing a divisional.
c. Delete any nonapplicable figures from the drawings
—that is, any figures directed exclusively to the
embodiment of the parent case. Make sure your
specification and drawings conform to each other.
d. You also have to file an IDS transmittal letter
(Form 10-5) and the actual IDS Forms (10-6) (use a
photocopy of the IDS in your parent case but change
the Serial Number and the Filing Date). Do this
when you file or up to three months later. You don’t
have to file any references again if your IDS cover
letter refers to the IDS in the prior case. Just type
the following on Form 10-5: “Pursuant to Rule 98(d),
the references listed on attached Forms SB/08 (A and
B) are not enclosed since these were supplied in the
parent case, Ser. Nr. / .”
To supply drawings for a parallel divisional case (the
parent case will be issuing), you have three choices:
1. If you’ve made formal Mylar film or Bristol board
originals of your drawings, you can file very good
xerographic copies of these for your divisional’s
formal drawings.