Earlier this year, the Australian Patent Office published a page on the Australian Patent Examiner’s Manual to introduce a new process for managing divisional applications where the application has a great grandparent or earlier.
In this article we briefly discuss the divisional application process, and explain the new process proposed by the Australian Patent Office. We also provide our recommendations for applicants who may be affected by this new process.
Filing divisional applications
Filing a divisional application from a patent application in Australia is a commonly used mechanism to extend examination or to pursue patent protection for other aspects or inventions disclosed in the preceding parent patent application.
There are no limitations on the filing of divisional applications, so it is entirely possible to have a chain of divisional applications, where each divisional child application is filed from a preceding parent application as long as the child divisional application is filed before either of the following:
- Before the acceptance deadline of the parent application, which is 12-month date from the issuance of the first examination report; or
- If the application is accepted, three months from the advertisement of the acceptance of the parent application.
In this way, a divisional patent application may have a parent application, grandparent application, great-grandparent application and so forth.
There can be various reasons why the divisional application has not been able to achieve acceptance within the 12 months of the issuance of the first examination report. These reasons may include that the applicant may wish to delay acceptance because the equivalent applications are not yet allowed in other jurisdictions, such as Europe, US, China or Japan, or they may wish to pursue additional inventions. Other reasons include difficulties in overcoming substantial objections, for instance novelty, inventive step or manner of manufacture objections (otherwise known as ‘ineligible subject matter’ objections).
The new divisional application process
The Examiner’s Manual, at section 188.8.131.52, now reads as follows:
First reports issued on divisional applications with great grandparent or earlier ancestors are to be treated as equivalent to adverse third reports, and are therefore to be reviewed by a supervising examiner. If the supervising examiner is of the opinion that no progress is being made, the case should be discussed with the Supervising Examiner (Patent Oppositions), including whether to set the matter for hearing or case manage the application to ensure a prompt resolution of its status. In certain situations, it may be appropriate to also consider case management or setting matters for hearing where no progress is made in grandparent and parent applications.
The Australian Patent Office has thus proposed that any first examination reports that are issued on a divisional application that has a great grandparent (or earlier) is to be treated to be equivalent to a third examination report. Third reports, as a matter or procedure, are always reviewed by a Supervising Examiner.
If the Supervising Examiner deems there has been no progress in the parent, grandparent and great grandparent applications, it appears that they can recommend case management or a hearing to achieve prompt resolution.
For all divisional applications with a great grandparent application, we are now advising clients to review the prosecution histories of the parent, grandparent and great grandparent applications before filing or shortly thereafter.
Where there has been no progress, for example, no responses have been filed to the first report in the parent and grandparent applications, we suggest amending the claims in a preliminary amendment and presenting arguments to the Examiner in anticipation of the first report. In this way, we can show that the applicant is making some progress towards acceptance of the application, and thereby avoid the new divisional case management process.
Previously, there was a similar divisional case management process which has been suspended in recent years. In that process, for some divisional applications, a hearing date could be set with only two months’ notice. This left very little time for applicants to respond appropriately to the objections. It is not clear whether a similar hearing process may be followed at the present time, but we would advise avoiding the case management process and potential hearing by filing preliminary amendments and arguments when filing a third- or fourth-generation divisional application, especially where no progress was made in the prior parent applications.