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[Sonam]

Hi!

I got to draft a US patent application for a subject matter "X". The applicant wants that a divisional application on one of the features, say "Y",  be filed along with the parent app. Can anyone help me with the contents of both the applications. As in, should the parent app contain the description and/or claim for the subject matter of divisional,i.e. "Y"? What should the divisional app. contain? Any help appreciated! 

[Isaac]

I got to draft a US patent application for a subject matter "X". The applicant wants that a divisional application on one of the features, say "Y",  be filed along with the parent app. Can anyone help me with the contents of both the applications. As in, should the parent app contain the description and/or claim for the subject matter of divisional,i.e. "Y"? What should the divisional app. contain? Any help appreciated! 

A divisional filed along with the parent should be considered a continuation.  In fact there may not be any real reason to connect the two applications at all as long as they have identical inventorship and are filed close together in time. 

I'd suggest drafting a single spec for both applications (possibly with different titles and abstracts).  Draft different claim sets for the two applications.

[patentsusa]

This really isn't a continuation or a divisional.  Just file a separate application.  A divisional is an application filed after a restriction requirement is received and claims priority from a parent.  A continuation application claims priority from a parent but is not the result of a restriction requirement.  In your case, it sounds like you are just talking about two separate applications.

In a true divisional or continuation, where one application is filed after the parent and claims priority to the parent, you would include a Cross Reference to Related Application section in the new application that lists the filing particulars of the parent; e.g., This is a continuation of U.S. Patent Application Serial No.  _______, filed on _____, titled "            ," by Inventor A and Inventor B, which is incorporated herein by reference.

You should make a note in your file or docket system to cross-cite prior art located before filing and that turns up during prosecution.  Maybe have a common prior art folder for the two cases.  In your information disclosure statement for one application, you should list the other application.  There are cases that suggest you should cross cite office actions as well.

[Robert K S]

A divisional is an application filed after a restriction requirement is received and claims priority from a parent.

While this isn't false, it isn't the whole story.  A continuing application should be called a divisional whenever it claims a different invention.  A restriction requirement isn't needed, strictly speaking.  This is my take on it.  As there is no 100% clear statutory guidance, feel free to disagree.  The case law I've read makes me feel like this is how the distinction should be approached.

In the final analysis I can't see any overriding benefit in calling one application a continuing application of the other when they are filed simultaneously; however, you will need to remind the Patent Office of the other application's existence and rejections that have been made in that application at virtually every step of prosecution in either application so as to avoid any appearance of inequitable conduct.  This, it would seem to me, would be a pain in the neck.

[patentsusa]

Fair enough.  I almost said "usually" results from a restriction requirement.

I don't think I would call it a continuation if there is no priority claim though.

I think there will be a need to cross cite prior art and office actions whether the second application is a continuation or a separate application with no priority claim.

[Robert K S]

I think there will be a need to cross cite prior art and office actions whether the second application is a continuation or a separate application with no priority claim.

There probably isn't a clear basis in law for demanding such in a child application, but I still more or less agree with you that cross-citing everything will be the only way to avoid any semblance of inequitable conduct.

[patentsusa]

There probably isn't a clear basis in law for demanding such in a child application, but I still more or less agree with you that cross-citing everything will be the only way to avoid any semblance of inequitable conduct.

I'm thinking of cases like McKesson Info. Solutions, Inc. v. Bridge Medical Inc., and, more recently, Larson v. Aluminart.