Let's say we have a claim includes preamble+A, B, C and D. Examiner says that claim is patentable. However, we also realized that preamble+D is also new and inventive.

Can we file divisional patent for preamble+D?

  • Was preamble+D described/supported in the specification as-filed?
    – George White
    Commented Oct 26, 2022 at 22:19
  • Yes. Structure and technical effect of D is described.
    – ASA
    Commented Oct 26, 2022 at 22:24
  • Also preamble+D is disclosed, too.
    – ASA
    Commented Oct 26, 2022 at 22:30

2 Answers 2


From the EPO

1.4 Examination of a divisional application The substantive examination of a divisional application should in principle be carried out as for any other application but the following special points need to be considered. The claims of a divisional application need not be limited to subject-matter already claimed in claims of the parent application. Furthermore, no abuse of the system of divisional applications can be identified in the mere fact that the claims of the application on which the examining division had then to decide had a broader scope than the claims granted in relation with the parent application (see T 422/07).

The EPO elsewhere says the claims of a divisional must not go beyond the originally filed disclosure and provides for when and where it can be filed. And that once filed it is independent of the parent application.

The quoted section answers the question. It says two significant things. The first is the claims of the divisional do not need to be among the originally filed claims and the second is that there is no problem if the divisional claims are broader than claims originally filed. That was the specific question.


OP stated in a comment that Preamble+D is disclosed in the patent application, namely Preamble+D is an embodiment supported by the description. In that case, yes, Preamble+D can be the scope of a claim in a divisional application.

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