[Pct] question about Canadian practice [divisionals of divisionals] -- maybe someone on this list knows

[Jeffrey Semprebon]

Hi Bill,

It's unclear whether this separation was done on the applicant's
initiative or was responsive to a Canadian action.

Advice I got some years back from one Canadian counsel as to whether one
could rely on a PCT finding of lack of unity to avoid the dreaded
double-patenting rejection was that they hadn't found sufficient caselaw to
provide a definite answer. As such, their advice was to enter w/ claims to
all the inventions (although not necessary dependent claims, since CA no
longer allows cramming in as many claims as possible w/ no excess fees) and
leave it to the examiner to restrict. Slower, but safer. Of course, if
every applicant follows this, the issue of whether or not a PCT lack of
unity suffices will remain unanswered.

-Jeff

Jeffrey E. Semprebon
Registered Patent Agent (mechanical) looking for remote work
jesemprebon at gmail.com
72 Myrtle Street
Claremont, New Hampshire 03743

On Tue, Mar 4, 2025 at 11:11 AM William Ahmed via Pct <
pct at oppedahl-lists.com> wrote:

> I have a question for any Canada-licensed patent attorney on this list.
>
> Background --> Canada has a known challenge related to double patenting,
> and unlike USA there is no objection of submitting a terminal disclaimer to
> obvvercome.
> As such it is not uncommon for applicants to provoke a 'unity of
> invention' objection - the CA examiner then splits it up into many
> inventions, and then neither of them
> can be references against each other for double patenting. Then the
> applicant just file many divisionals..
>
> My issue -> PCT entered Canadian national phase. Applicant has now split
> it up into 7 inventions.
>
> I think if I then file 6 divisionals at ONCE, I am OK - the unity of
> invention objection would protect these divisionals from each other (and
> from the PCT national phase filing)
> with respect to Canadian double patenting. However, that is a lot of cash
> paid now, instead of 'spacing it out' over years.
>
> MY QUESTION --> instead of filing 6 divisionals at ONCE (i.e. in
> parallel), could I do it in SERIAL (i.e. first a divisional, and then a
> divisional of divisional, and then a divisional of divisional of
> divisional), and so one.
>
> If I file in SERIAL (i.e. 1st generation DIV, then 2nd generation DIV),
> would I achieve the 'benefit' of immunity from double patenting in Canada
> based on the
> 'large unity of invention requirement' in the PCT national phase filing.
>
> I hope this was clear - it is NUANCED, and I hope I successfully explained
> the issues.
>
> NOTE -- some jurisdictions like Japan treat divisionals and
> divisionals-of-divisionals the SAME. In other jurisdictions (e.g. China)
> there is a disctinction.
>
> Thanks,
> Bill
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>
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