Divisional Application In USA

Question 1
If the applicant decides to elect to amend the claims to contain only 1 group, when is the deadline to file for divisional application(s)?

Answer 1
There is not a specific deadline to file a divisional application; however, the divisional application must be filed before either the parent application issues as a patent or goes abandoned.

Question 2
What is the difference in continuation in part and divisional application?

Answer 2
A continuation in part application is one that claims priority to an earlier application but also typically includes new matter that was not described in the earlier application. The priority date of the earlier application is given to any claims whose subject matter was described in the earlier application and any claims with new matter are deemed to have the priority date of when they were filed.
A divisional application is an application that is filed with respect to non-elected claims in a previously restricted application and the claims in the divisional application are given the priority date of the claims in the previously restricted application (assuming no new matter is added to the divisional application).

Question 3
Our initial proposed response will be to divide the parent application (by using claims of group 1 only) to another 2 child application (where claims of group 2 and 3 divided accordingly). Would you think this is a more viable solution. Would you take similar action?

Answer 3
Our suggestion is to elect to desired group of claims in the present application and have them examined per the standard course of action. Please also note that you will also need to elect a species of a particular compound in which the Examiner poses 4 questions and one disorder or disease must also be elected. Then we would propose that you file a divisional application or applications for any non-elected claims. This may prove to be the most efficient solution as drafting and filing fees would likely be lower that the filing of two new child applications. Additionally, it may be possible to amend some of the claims in groups 2 and 3 so as to put them into one application and avoid a future restriction requirement.

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