Service
Divisional Patent Application Filing
This service is for the Divisional Patent Application (Utility) Filing only paralegal work.
If any claims restrictions were ever issued in your application then you will have to order our Divisional Patent application service which usually costs the same as our basic CA service.
NOTE: only one restricted invention is allowed per Divisional Patent Application.
In our basic (lowest cost) divisional Application Prep./filing service, we are not performing any claims or specification drafting work. Instead, you simply indicate or provide us which claims should be included in the divisional, which is usually just a copy of the claims withdrawn in response to the restriction election done during prosecution to get quicker allowance, or embodiments in the specification that were never claimed.
If you want this ‘Filing only’ continuation service work, please add this service to your cart, and do the full checkout/intake process to indicate to us that you want that work to be done as well. Otherwise, please ask for a quote if you think you have some more extensive situation requiring claims scope analysis based on certain business goals you may have in mind.
The additional ‘Basic Cleanup’ fee is for very simple situations where a paralegal can lightly amend up to 10 claims, wherein we solely make very limited edits of the allowed set of claims for a continuation patent application (no new matter) based on client’s proposed elements to add/remove. Higher levels of service are available upon request and separate quoting, which can include our searching for potentially valuable things to claim based on the original specification and/or prosecution history of this case.
What is a Divisional patent application?
A divisional patent application, also called divisional application or simply divisional, is a type of patent application that contains subject-matter from a previously filed application, the previously filed application being its parent application. While a divisional application is filed later than the parent application, it retains its parent's filing date, and will generally claim the same priority. Divisional applications are generally used in cases where the parent application may lack unity of invention; that is, the parent application describes more than one invention and the applicant is required to split the parent into one or more divisional applications each claiming only a single invention. The ability to file divisional applications in cases of lack of unity of invention is required by Article 4G of the Paris Convention.
Key Aspects:
- Origin: Usually filed in response to a "restriction requirement" from a patent examiner who found multiple inventions in one filing.
- Purpose: To allow an applicant to pursue protection for the other distinct inventions they had to separate out.
- Filing Requirements:
- Must be filed by the same applicant.
- Must only include subject matter (claims) fully supported by the original parent application's description.
- Must be filed before the parent application is granted, refused, or abandoned.
Our general guidance regarding doing a Divisional application vs CA vs a CIP
It is highly advised that you file a divisional application (DA) to prosecute withdrawn claims that you believe have important value which you want to get patent protection for. Like a "continuation patent application" (CA or CPA), no changes to the specification or drawings is permitted, only the new set of claims is allowed. Divisionals keep your options open after the parent patent issues in case you need to add additional/better claims that cover errors/oversights in the original filing, which is esp. important if you expect knock-off products/services, licensing/investment deals, etc. Otherwise, you risk your patent protection not covering products/services you would have wanted it to, especially against unforeseen situations that evolve in the marketplace. If you want to modify withdrawn claims or are generally unsure about how you want to prosecute future claims on an allowed patent application, please take note that when you have ongoing business in the area of the patent it is usually very wise to at least keep the patent chain alive by filing a "Continuation Patent Application" (CA) with different claims but no new invention information. Moreover, when there are invention improvements you want protected, then you should do what is referred to as a "Continuation in Part" (CIP), which is like a child patent application that gets the priority benefit to the original parent filing for the things in common, but allows you to add novel claims and description of valuable things to again try to win patent protection of as before.
Click here for an explanations of what a Divisional
application is.
See here for explanations of what a CIP is:
Another benefit of filing a CIP, as with a CA, is that it keeps the original patent chain pending for a good while so that as you discover improvements or if there is an infringement case, you have many more options to more optimally expand/strengthen your patent strategy, which is very often critical to winning against savvy competitors/copyists. In effect, the like the CA, the CIP enables you to continually add novel improvements to the methods/features of your original filing. This CIP filing not only broadens your patent scope but it keeps open your legal options to broaden the patent if infringers find a loop-hole in the parent patent's claims. This CIP be filed before the filing of the issue fee paperwork and payment. Usually, you would want to add all your improvements to the invention/product/ methods/features of the original filing. If you did want to do the CIP, the cost is usually much lower than the original patent application work because the additions are usually just incremental. You should generally allow at least 2 months lead time to start the CIP work just to be very safe; that is, our CIP work generally has 60 day turnaround times, so given the below noted strict timing requirements, you should not delay if you want to do it.
If you did have something new to claim that was in the original disclosure, but are unsure if a CIP is needed, then you should question if the original patent spec/figs fully defines something (e.g., a design or feature)that was not ever claimed, then a continuation (not CIP) is the best way to go, where we will simply draft new claim(s) covering that in the original patent application is usually the best and cheapest. However, if the original disclosure only mentions this unclaimed design/aspect/feature without all the needed details (and drawings) showing how to make it and use it for the intended purpose, then a CIP adding those details would be the best approach.
In summary: if the original patent spec/figs fully defines something (e.g., a design or feature)that was not ever claimed, then a CIP is not the best way to go, but having us draft new claim(s) covering that in a continuing patent application is usually the best and cheapest. However, if the original disclosure only mentions this unclaimed design/aspect/feature without all the needed details (and drawings) showing how to make it and use it for the intended purpose, then a CIP adding and claiming those new details would be the best approach
NOTE: quoting particular situations can take us several weeks and doing the new filing work in another 3-6 weeks total is not unusual. That said, please note that we are not responsible for any quoting delays which cause any kind of issues with meeting any deadlines. Hence, if and when the deadline is within 6-8 weeks away, we strongly recommend you either be a ‘squeaky wheel’ calling it to speed along the quoting process or just directly order the Basic service and delay any higher levels of service (and paying the difference for upgrading) until after filing the continuation because further amendments can be done as a preliminary amendment after filing the continuation without any penalties or impacts. Same goes for CIP work as well.
For a CIP work (i.e., adding new matter/claims to your original patent application) our fees start at around $900-$1200 for the simplest, almost "as is" filing, and goes up from there depending on how much material you want to add and/or claim, and what work we must do. CIPs must always be quoted in advance of our accepting the work. So for a CIP quote, please edit your new material and/or corrections into our original WORD document specification that we filed (using ‘tracked changes’ so we can see what is new) along with any new drawings you want to add and a list of the new key elements you want to claim.
For both a CA and CIP, for more accurate quoting and better achieve your overall protection goals, please complete/return our claims guidance form
For continuations (CA or CIP), you can help lower our work (and hence our fee) by identifying for us the remaining invention features you believe are valuable to pursue in the continuation. Please ask for a quote if you are interested, along with such input if you have it to offer.
NOTE: Under United States patent law, a continuing patent application is a normal Utility patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.
NOTE- regarding NEW MATTER: No new matter is allowed in a continuation patent application (CA); hence, we will be filing the original specification and drawings. Only the claims may be changed. See the CIP options if you want to add new matter to the specification.
NOTE: A common misconception about a CIP/CA is to think that if you enter a request for continuation, that means the grant status is delayed until the CIP or CA is allowed. Fortunately, the answer is absolutely no. They are completely independent of each other. The CIP and CA only points back (i.e., gets benefit priority) to the original patent if filed before issuance fee payment, otherwise you lose your CIP right and your issued patent then becomes prior art against any subsequent patent app filing you do. When you already have real business interests in place, or products on/imminent on the market, it is very unwise to not file a CIP, given how cheap it is to keep many offensive and defensive options open, and it enables you to later correct errors/omission you may discover as critical down the road. That is our take on the subject, of course, the financial opportunity/cost choice is up to you.
How to Engage our Services
1) Configure the above shopping cart options (if any) according to what best fits your situation, goals, and/or budget. (you may always edit your cart to make any changes- see below for details)
a) The service item may have a text entry field named "Please provide any Special Instructions...", where you should enter any specific guidance or information that may be helpful for us to properly process your order (e.g., any case number we've assigned, deadline situations, how this order relates to any other orders, etc.)
b) The service item configuration total price will be reflected in the "Selected Combination Total" line item below any options menus. Likewise, the "Service ID" will be updated to encode your configuration selections.
2) Click the "select service" button to put the service item you configured into your shopping cart. You will notice shopping cart at the top right of the page, which indicates how many items it currently contains. Click that shopping cart icon anytime you want to see what items are in your shopping cart, and you'll notice a pencil icon on each item which enables you to go back and edit the item, and save your edits by again clicking the "select service" button.
3) Click the "Checkout" button to begin the checkout process. On the Checkout page, enter your email address, client status, and PoC information for the legal service you are ordering. Then click the “next intake page” button to proceed to the payment indication page.
4) Make your payment off-line (i.e., not through our website) using one of the methods specified in the postscript of quoting email. Currently, online payment methods through our website are not implemented yet.
5) After you made your payment off-line, return to the above payment page on our website where you will specify how much you paid, by what means, and some kind of transaction receipt/info for us to research and match it up to your order to approve it.
a) NOTE: Most of our services require 100% prepayment of the quoted fee; however, if our emailed written quote indicates a lesser prepayment amount then instead of our standard full prepayment policy for reduced fixed-fee work, you can take advantage of a reduced minimum down payment fee (e.g., 50% of the quoted fixed-fee, plus any rush fee quoted) to start patent work on each case. The remaining fees are later due at least upon our completing the 1st draft of the ordered legal service for your review/revision and/or our filing.
b) If you paid using methods like PayPal/Zelle/check/money order/bank wire/bank deposit/ etc., then during the above linked checkout process select the "off-line" payment option, which will ask you for which "off-line" payment means you use and a copy of the transaction information so that we may manually confirm and process it to credit it to your account.
6) After you register your payment per the above, our system will guide you to our online new case intake forms to gather your administrative information for this new patent case (e.g., POC, contacts, inventors, assignees, work request details, service agreement, etc.).
7) You will be emailed a link to proceed to our secure client portal dashboard to securely submit your materials, documents and instructions for our legal work.
8) Our team reviews all your submissions and works with you to validate/improve anything needed for us to properly do our legal work.
Of course, if you have any questions not yet answered, or otherwise require any help, please do not hesitate to contact us. We will happily assist you.
Pricing
| Price | 0.00 |
|---|
| Minimum pre-payment | 100 |
|---|
View the original dynamic service page