On 1 February 2011 the Australian Patent Office published an amendment to their “Manual of Practice and Procedure” for Examiners. The amendment relates to the Patent Office’s internal handling of divisional applications.
Divisional applications are typically filed to accommodate circumstances in which there is more than one invention disclosed in the parent application, to maintain patent coverage for a patent applicant where the parent application has not been accepted before the 21 month final acceptance deadline, and to include in the specification of the divisional application material not disclosed in the parent application.
The change in Patent Office practice relates particularly to instances in which a divisional application is lodged to maintain protection where the parent application is about to lapse as it has not been accepted by the absolute 21 month acceptance deadline.
Where an objection is raised against a divisional application, for the same or substantially the same reason as an objection was raised against the parent application, the applicant is now given only two months from the date of the Examiner’s report on the divisional application to lodge a response overcoming the objections in the report. If such a response is not lodged, or fails to overcome the objections raised in the report, the application can be refused by the Commissioner of Patents. However before such a refusal issues, the Commissioner must give the applicant the opportunity to be heard..
The new practice is onerous in that only a very short period of time is available for the applicant to place the divisional application in condition for acceptance.
Possible avenues open to patent applicants in such situations include:
- including in the claims of the divisional application at least one claim not previously examined, thereby ensuring that the objections raised against the divisional application’s claims are not identical to the objections against the parent application’s claims; and
- rather than lodging the application as a divisional application, lodging the application as a standard application (before the parent application lapses). This standard application can then be amended at a later date to become a divisional application. This will provide the applicant with an extended period of at least one to two years before an adverse report issues, with the timing being very much under the control of the applicant.