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

Tue Mar 4 18:29:02 UTC 2025

Very helpful insight.

Thanks Janice!

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From: Pct [mailto:pct-bounces at oppedahl-lists.com] On Behalf Of Janice Kelland via Pct
Sent: Tuesday, March 04, 2025 10:23 AM
To: pct at oppedahl-lists.com
Cc: Janice Kelland <Janice.Kelland at moffatco.com>
Subject: Re: [Pct] question about Canadian practice [divisionals of divisionals] -- maybe someone on this list knows

Canadian double patenting practice is indeed a different beast.

Bill, the short answer to your question is that you can file a divisional of an original patent application as long as the parent or a valid divisional application of that parent is still pending (i.e. up to the day before the day the latest pending divisional application issues as a patent or is irrevocably abandoned with no chance of reinstatement). So you can "daisy-chain" the divisional filings and file them serially as validly as you can file them concurrently.

But whether your patents are immunized from double patenting depends, not on if they were filed serially or concurrently, but on whether the claims of each of the divisionals are "directed to a different invention" from each other. Having a lack of unity objection issued by a Canadian patent examiner provides some evidence of this, but some recent case law seems to indicate that a court could still find later that the claims of two divisional patents granted by the Canadian Patent Office (CIPO) are not directed to different inventions, despite a lack of unity objection issued by an examiner during prosecution of a parent application identifying the claims as such.

Jeff, your point regarding whether a PCT lack of unity finding would protect a divisional against a double patenting objection or challenge is interesting. Canadian examiners sometimes do reiterate PCT lack of unity objections (along with lack of novelty or inventive step objections issued in the IPRP) in the first office action of a Canadian national entry application, if the claims being examined are still the original PCT claims. However, since the IPRP may have been issued from an ISA or IPEA in a jurisdiction where lack of unity practice is different than in Canada, I wouldn't rely on a PCT lack of unity finding alone to protect you from double patenting under Canadian law, unless the objection also comes from a Canadian examiner. Certainly, many restriction requirements issued by US examiners would not be considered "different inventions" under Canadian law.

Like the Canadian counsel you mention, Jeff, I generally recommend putting all the claims you might want allowed (or at least all the independent claims, to save on excess claims fees) in the parent application and allowing the Canadian examiner to decide whether they are "directed to different inventions" - if not, the parent application might be your only opportunity to get the claims in Canada.

Hope this is helpful,
Janice

Janice G. Kelland | Partner, Patent Agent
Ph.D. (Chemistry), M.L.I.S. (she/her)

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Message: 1

Date: Tue, 4 Mar 2025 16:08:59 +0000 (UTC)

From: William Ahmed <ahmed.william at ymail.com<mailto:ahmed.william at ymail.com>>

To: for Users of the Patent Cooperation Treaty

                <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>

Subject: [Pct] question about Canadian practice [divisionals of

                divisionals] -- maybe someone on this list knows

Message-ID: <547996491.3882368.1741104539113 at mail.yahoo.com<mailto:547996491.3882368.1741104539113 at mail.yahoo.com>>

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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

Message: 2

Date: Tue, 4 Mar 2025 11:26:42 -0500

From: Jeffrey Semprebon <jesemprebon at gmail.com<mailto:jesemprebon at gmail.com>>

To: "For users of the PCT and ePCT. This is not for laypersons to seek

                legal advice." <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>

Subject: Re: [Pct] question about Canadian practice [divisionals of

                divisionals] -- maybe someone on this list knows

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                <CAO06Bycmvf_Hkfx8+msc7RDtHvB7Tci=LX_A3zHHzFfm3TjzwQ at mail.gmail.com<mailto:CAO06Bycmvf_Hkfx8+msc7RDtHvB7Tci=LX_A3zHHzFfm3TjzwQ at mail.gmail.com>>

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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<mailto:jesemprebon at gmail.com>

72 Myrtle Street

Claremont, New Hampshire 03743

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