A divisional patent usually results from a restriction requirement. The restriction requirement -sounds ominous - a phrase an attorney would love. So what does it mean?
Under U.S. Patent Law there is only one invention allowed per patent. One patent - one invention. That does not mean you can not claim multiple variations (embodiments) of that invention - but in the eyes of the examiner there should be only one inventive concept.
In the eyes of an examiner, if there are multiple inventions, not only is that a no-no, but it likely means that the examiner will have to perform multiple searches, increasing his work load on this particular application.
So the examiner issues a restriction requirement.
So what does that mean?
What the restriction requirement says, after being interpreted from legal talk into English, is essentially, you, the applicant, has 2 or more inventive concepts in this application - tell us which one you want.
This is often, but not always, couched in terms of particular claims. The examiner will say in effect "claims 1-6 are one invention, and claims 7-17 are a second invention - which set do you want me to examine". Occasionally an examiner might reference drawings. " The first invention is represented in figures 1-2 and the other is figures 3-8". It is also not unusual to get a restriction requirement that calls out 3 or more inventions.
You are now required to "elect" one of the inventions and it's associated claims. The remaining claims are dropped (for now) - and the examiner will proceed to examine the reduced claim set.
So what does this mean?
First - understand that it does not mean that you have to give up your dream at claiming all of your inventive concepts. Once you "elect" the claims you want to first pursue, you can come back at any time during the pendency of the application and file what is called a divisional patent application, which asserts the other claims that you did not elect.
A divisional patent application is straightforward. You simply submit the same specification and same drawings, but with a different set of claims. Yes - you do have to pay another filing fee because this is a new application. So you started our pursuing one patent and you could end up with two or more. And each of these maintains the priority date of the original submission.
It is possible to "traverse" this requirement and try to argue that the examiner has made an error in concluding there is more than one invention. I frankly never try that. I tend to view the requirement as an opportunity to get additional bites from the examiner's apple. In prosecuting the first "invention" I will learn what the examiner views as important prior art, and use that information in amending the remaining claims before submitting the divisional. It is true that a successful traverse could save my client a second filing fee (~$800 for small entities), but I would also have to charge my client at my normal billing rate to pursue the traverse arguments so the net savings would be small. And I imagine that traverses of restriction requirements do not have a great success rate - although I do not know the statistics.
Anytime in the future that you pick up a patent and see that it is a divisional patent of another patent you now know what that means. Chances are this was an original application that was issued a restriction requirement by the examiner. And when you place that divisional and the original application side by side you will see that they are identical - except for the claims.
One other important note. A restriction requirement does not count as a first office action. This is because the examiner has not yet examined your claims for patentability. So you will still get a non-final and final office action in the future.
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