In China’s patent filing practice, divisional application is very popular among patent applicants. Divisional applications can be filed almost at any time regardless of the status of the parent case. A parent case can be divided within 2 months from the date of receipt of the grant notification. If a parent case is deemed to be withdrawn, a divisional application could be filed after the rights are restored. When a parent case is rejected, a divisional application could be filed within 3 months after receipt of the rejection decision, regardless of whether a request for reexamination would be filed. And when an administrative litigation filed against reexamination decision is in process, the application can still be divided. Even after a parent application is closed, another divisional application could still be filed if the previous divisional application is determined as having unity defect by an examiner.

In 2020, the CNIPA’s Administrative Reconsideration Decision No. (2019)0044 held that “The original application meets the requirements of unity. When XX company files a divisional application, the claims of the divisional application are the same as those of the original application, both belonging to the same inventive concept, and thus do not fall into the situation where a divisional application could be filed." That is to say, divisional application cannot be filed on will. It depends on whether unity requirement is met by the parent application and the divisional invention. Only when the two do not have unity, can the divisional application be filed.

The applicant for the above reconsideration was dissatisfied and filed litigation before the Beijing IP Court. The Court’s Administrative Judgment No. [2020] Jing 73 Xingchu 3088 decided that “Where the original application is found to meet the requirements of unity after examination, and the claims of the divisional application and the original claims of the original application belong to the same inventive concept, it shall not be deemed as a situation where a divisional application could be filed.” The Beijing IP Court maintained the reconsideration decision of the CNIPA.

Sanyou advise applicants to pay special attention to the above decision, because it may affect the handling of similar cases in the future.