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

[Timothy Snowden]

Well, could you file 1 divisional with all the unelected claims, and 
force them to split it up again?

On 3/4/2025 11:05 AM, William Ahmed via Pct wrote:
> 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 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
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