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

[William Ahmed]

 Thank you Jeff.
This already entered Canada and the Canadian examiner split it up.I don't know if I will need to file 6 divisionals in the next 1-2 years, or only 1-2.That might influence how we proceed.
-Bill    On Tuesday, March 4, 2025 at 06:29:36 PM GMT+2, Jeffrey Semprebon via Pct <pct at oppedahl-lists.com> wrote:  
 
 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 workjesemprebon 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-- 
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