Divide and conquer

The filing of divisional patent application can open up more options for patent strategy, according to Annelise Engelbreg of KISCH IP

A patent strategy is vitally important to any business and a balance needs to be found between being cost effective and obtaining the most protection possible. It is often advantageous to file a provisional patent application, including for the numerous different components of an invention. These components could be new inventions in themselves and, instead of linking separate components to a single invention, capable of separate patent protection. This gives the patent owner better protection.

A basic rule of patent law is unity of invention. While a lack of unity is not grounds for revocation of a patent in South Africa, the act states that a patent may only be granted for a single invention. If a patent application contains several inventions not linked in any way, there would be lack of unity. The filing of a divisional patent application therefore offers the applicant the option of obtaining patent protection for different inventions originally disclosed in a single patent application (the main or parent application) without risking invalidation by virtue of anticipation.

In South African patent law, divisional applications must be filed at any time prior to acceptance of the parent application and must then be antedated to a date not earlier than the date on which the parent application was filed. Patent term extensions are not possible and the divisional application will expire at the same time as the parent application. Filing of continuation or continuation-in-part applications is also not provided for, although the law does provide for the filing of a patent of addition.

Further, South African patent law does not specifically exclude cascades of divisional applications, that is, the filing of a divisional application on the basis of another divisional application. However, legislation is unclear on whether a divisional filed from a parent divisional can be antedated to the lodgement date of the first parent application, which may introduce a risk of invalidation by virtue of anticipation. The direct parent application must still be pending in order to be able to file a second divisional.

When filing a divisional application the matter therein must be directed to part of the matter disclosed in the parent application. The description may not include matter that was not originally disclosed in the parent application. Generally, the body of the specification of the divisional application is the same as that of the parent application and the claims of the divisional application are usually a subset of the claims of the parent application and may not go beyond the original disclosure.

Acceptance of a South African patent application generally takes place 12 months from the filing of a South African national phase application (or 18 months from filing a South African complete application). One must keep in mind that even once acceptance of an application has been received from the South African patent office, it can be withdrawn and delayed for a period of time, in order to allow the applicant to consider possible amendments and the filing of a divisional application. Our law does not specifically exclude double-patenting, but the intention of our legislation is to divide out part of the claims of the parent application by deleting these from the parent application and including them in the divisional application. However, South Africa is not an examining country and double patenting may thus occur when the claim set which is divided out, is not deleted from the parent application.

The filing of divisional patent application can therefore open up more options for patent strategy, in order to pursue patent protection in a more targeted and comprehensive manner. In order to obtain a higher degree of protection, the applicant must have a clear understanding of the optimal timeframe for filing a divisional application and filing claim amendments to the parent application.
The latest features from IPPro Patents
The European standard-essential patent fight has only just entered round one and with time still on the clock, it’s anyone’s game
The US Court of Appeals for the Federal Circuit’s decision in Aqua Products v the US Patent and Trademark Office has ruffled many feathers, as the burden of proof in an inter-partes review begins to shift to the petitioner
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Allergan’s recent patent deal with the Saint Regis Mohawk Tribe has drawn the ire of the industry, and the jury is still out on whether it will work
Unfavourable environments for business method patents in the US have led to an increase of filings in Asia. Benjamin Keim of Lee & Hayes explains
Doris Spielthenner of Practice Insight discusses Amazon’s now expired ‘1-Click’ purchase patent and the problems with owning such a broad “super-patent”
While uncertainty persists, plant breeders may need to double down to secure their rights, says Penny Maplestone of the British Society of Plant Breeders
Least developed countries can now more easily obtain compulsory licences during public health emergencies, but some have been slow to take advantage. Vítor Palmela Fidalgo of Inventa International explains why
Diana Portna of D&L IP Group explains how Ukraine’s compulsory licensing laws could be opened up for the public interest, and how rights owners could react
Country profiles
The latest country profiles from IPPro Patents
Bruno Nunes of BN IP explains how patent prosecution and licensing works in Macau, a market dominated by gaming and pharma
Tran Viet Phuong of Duong Tran offers a handy guide to patent prosecution
IPPro Connects

Visit our sister site
the worlds biggest and best IP directory

The Andean Community has stood firm in the defence of its owns interests, says Jesús Cuba and Kelly Sánchez of OMC Abogados & Consultores
The first preliminary injunction granted by a China IP court was awarded to Christian Louboutin. Dr Weili Ma of Chofn Intellectual Property explains
Patent prosecution in South Africa rarely favours the inventor, but recent reforms are aiming to change that, one little bit at a time
The Tanzania Patent Office is a useful partner in the prosecution process, says Sunday Godfrey Ndamugoba of ABC Attorneys
Dominic Ogega Mwale, managing partner at Mwale & Company, explains how to patent in Kenya
Patent owners looking for an attractive place to seek protection in Asia need look no further than Singapore, says Max Ng and Gerald Mursjid of Gateway Law Corporation
The latest interviews from IPPro Patents