Revision of Divisional Practice

IP Australia is currently implementing changes to the way in which it handles divisional patent applications. The intention of the changes is to reduce delays in achieving resolution (acceptance or refusal) of divisional applications.

The changes are relevant to divisional applications:

a) filed in response to a non-unity of invention objections;
b) filed voluntarily for subject matter supported by the description; or
c) filed as a re-filing of a parent application and as a consequence of failing to overcome all objections raised by the examiner to the parent application under Section 45 within the prescribed period.

The following changes are being implemented.

  1. Directions to Request Examination will issue within about one month of the divisional application filing (assuming examination of the parent or other related application has been directed).
  2. Examination Requests on divisional applications will receive priority over other applications, so that reports will issue quickly after examination is requested.
  3. A hearing may be set down. If the divisional application is assessed as being a mere “re-filing” of a lapsed parent application, with the equivalent objections being applicable to both applications, then the Commissioner will issue a report giving notice that unless amendments overcoming the objections are filed within two months of the date of the report, the application will be set down for a hearing. The expectation is that the hearing would result in the application being accepted or refused, or in the Commissioner directing amendments to be made (section 107 of the Patents Act).

This two month deadline does not disturb the twenty-one month acceptance period. However, actions taken in response to or in consequence of the two month deadline may result in the application being resolved more quickly. Official leniency in extending the two month period is uncertain.

These changes have not as yet been “officially” announced and implemented, but that is expected to occur shortly. The changes will have a number of practical implications for patent applicants. One possible benefit is that Divisional applications may be used advantageously to expedite examination. However, it will be more difficult to “buy time” for prosecution by re-filing an application as a Divisional application. Further, combining a number of inventions into one application with the intention to divide out at a later stage may not be an effective strategy if you intend to delay prosecution or costs. Finally, applicants will need to be aware of the potential for a hearing and additional costs should the objections that are raised during prosecution not be resolved.