Filing a divisional application for an industrial design – a procedure and why it may be necessary

According to Paragraph 1 of Article 1352 of the Civil Code of the Russian Federation, the following shall be related to industrial designs: “the implementation of the appearance of the article of an industrial or handicraft manufacture.... The essential features of an industrial design shall include the features that determine the aesthetic peculiarities of the appearance of the article, in particular a shape, a configuration, an ornament, a combination of the colours, lines, the contours of the article, the texture or facture of the material of the article.”

The analysis of the cited norm shows that the domestic legislator gives the manufacturer or other person a possibility to obtain the exclusive powers to the original design or to the appearance of the article.

An application for the registration shall be filed in respect of one subject matter or an interconnected group of solutions. The latter variant is also used by applicants to save money. Thus, the author of the result of intellectual activity gets a possibility to file the application for the registration of various variants of the subject matter, the set that makes up the common composition or the group of the parts of an integral unit.

However, it should be borne in mind that the norms of the Civil Code of the Russian Federation contain the condition, which is necessary to be fulfilled in order to make permissible the registration of such subject matters within the framework of one industrial design. It is indicated in Paragraph 1 of Article 1377 of the Civil Code of the Russian Federation that the application may relate to: “... the group of the industrial designs that are interconnected so that they form a single creative concept (the requirement of the unity of the industrial design).” Only if the requirement of the unity of the industrial design is observed, it shall be allowed to indicate the group of the subject matters. If the described condition is not observed, the Patent Office experts advise to divide the subject matters and to divide them out of the office proceedings regarding the original application into the separate office proceedings. In this case, it is advisable for the right holder to file the divisional applications to maintain a priority. As a result, the applicant shall receive several applications regarding the different subject matters, while the priority shall be maintained and it shall be established according to the date of filing the first application.

As practice shows, in Russia, there are quite high requirements for the unity of the solutions claimed within the framework of the application for an industrial design. Some company addressed the patent attorneys of Zuykov and Partners with a request to file to Rospatent an application for the registration of the industrial design “A Gun to Spread Sealing Foam” based on the Convention Chinese application. The application included the description of two variants of the same subject matter; the difference was in the presence of a small button on a housing. During the examination, the experts of the Russian Patent Office concluded that the above difference was “an essential feature determining the aesthetic peculiarities of the appearance of the claimed solutions,” therefore it was impossible to include two variants in one application. The applicant was offered to divide the solutions and to file the divisional application or to exclude one of the claimed variants.

A number of the creative solutions that fall under the concept of an industrial design also comply with the conditions of protectability required for trademarks. In this case, the owner can register them as one of the above subject matters of intellectual property or simultaneously in two industries, what will serve a reason for cross protection.

The application for the registration of an industrial design shall pass a standard check procedure at the Patent Office. The applicant shall be authorized to file the divisional application at any step of the examination. This application is a new submission based on the original documents received earlier by Rospatent together with the different application. It is logical to assume that certain conditions must be complied for the division:

• Both applications are filed by the same person.
• The earlier submission is not withdrawn and it is not recognized as withdrawn.
• The industrial design is disclosed in the original application.
• If a decision to grant a patent is made regarding the original application, the divisional application shall be filed before the date of the registration of the industrial design.

The right holder shall file the divisional application in the same way as the ordinary one. However, the form should contain the date of filing of the original application as the priority of the industrial design and its number should be written in the special field of the document. In addition, the applicant shall attach his request to divide the application out of the original application into the separate office proceedings requesting to establish the priority according to the date of filing the original application. The relevant request shall also be filed to the original application indicating that the application is divided out of this application into the separate office proceedings, as well as indicating the number of the divisional application.

After the registration of the submission, the Rospatent specialists shall carry out an examination as to form and they shall find out whether the above conditions are complied, and they shall also determine:

• Whether both applications are identical.
• The scope of the requested legal protection, which should be less than the one claimed in the original application.

If all the requirements are complied, the application shall be recognized as a divisional one and it shall be accepted for consideration. The priority according to the original application shall be established regarding it. The applications shall be checked then by the experts as the independent submissions.

Otherwise, the applicant’s application shall be refused to be accepted for consideration as a divisional one, and due to this reason the priority according to the date of the original application shall not be established regarding it. 

The advantages of dividing the application

Such actions of the right holder of the result of intellectual activity are due to a number of positive consequences:

• If there are the problems with the consideration of the application, the person shall be entitled to execute the divisional application, to claim the smaller scope of legal protection, but to speed up the registration process (for example, when registering the group of the solutions that form the single creative concept).
• According to Paragraph 4 of Article 1381 of the Civil Code of the Russian Federation, the priority of the divisional application shall be established based on the original submission. This allows the applicant maintaining the competitive advantage obtained thanks to the original submission to Rospatent.

In conclusion, it is important to note that the divisional application is a kind of the submission that is based on the previously filed application and, under certain circumstances; it allows the right holder of the subject matter maintaining the priority and continuing the examination procedure regarding the claimed industrial design.