Posts Tagged: "divisional applications"

Patent practitioners (hopefully) know that there are many types of patent applications and, at times, have filed a continuation, continuation-in-part, or divisional application. “Continuation practice” was the once commonly used phrase to describe subsequent U.S. patent applications, which also used to include file wrapper continuations (FWC), now replaced by the more modern request for continued examination (RCE). These types of subsequent patent applications can be used strategically to build a portfolio of patents for a client for a given subject matter. See, e.g., the patents asserted in WesternGeco LLC v. ION Geophysical Corp., 585 U.S. ___, 138 S.Ct. 2129 (2018). However, many patent practitioners are not fully aware of the implications of each such subsequent application, either for prosecution or for litigation. This five-part series will review these types of applications and their implications and ultimately provide some relevant practice tips.

Over the past decade—and likely for the rest of our lifetimes—China has become a favored venue for patent filings due to its increasing GDP and expansive market. However, U.S. applicants familiar with U.S. patent rules should be careful not to employ the same prosecution strategies as used in the United States when filing Chinese patents, as the rules in the two jurisdictions are materially different. For example, in the United States, it is common to file a string of continuation applications for inventions that are licensing/litigation worthy. In China, there is no corresponding opportunity.