IP Australia, in line with reviews in other jurisdictions, is
seeking to address concerns around certainty of patent rights
arising from the filing of divisional applications, particularly
where divisional applications are filed with identical or
substantially identical claims to those originally filed in the
IP Australia is addressing this problem through changes to
'case management' practice rather than any legislative
changes. Effective October 1, 2010, the following practice will be
implemented in stages:
Requests for examination of all divisional applications will be
expedited by early issuance of examination directions.
Where grounds for objection exist, a first adverse examination
report will issue in the normal way.
However, where a ground of objection is substantially identical
to a ground previously raised in relation to the parent application
and not addressed by substantial amendment or written submissions,
the report will, in addition, give notice to the applicant that if
no response is filed within two months of the report overcoming the
ground of objection, the Commissioner will consider whether to
direct amendment of the application or proceed to refuse the
If a response overcoming the objection is not filed within that
period, IP Australia will contact the applicant or their attorney
and discuss the case before setting the matter for hearing
according to established practice. Where the matter is the subject
of a hearing, the hearing officer will consider all grounds of
objection whether raised previously or not. Where a ground is
capable of rectification a reasonable period for the applicant to
overcome that ground will be provided. An appeal to the Federal
Court of the hearing officer's decision is available under
This last change is expected not to affect divisional
applications considered to be in respect of "genuine"
different further inventions.
As there have been no legislative changes, the two-month
deadline does not override the normal twenty-one month period
available for obtaining acceptance of a divisional patent
application. However, the new expedited approach to prosecution
will force applicants to resolve any outstanding issues more
The changes will have a number of practical implications for
patent applicants. It will be more difficult to delay prosecution
by re-filing an application as a divisional application. Further,
the strategy of filing divisional applications in order to reserve
options in relation to activities of potential infringing
competitors will now be severely curtailed - though alternative
strategies are available and should be discussed with your patent
attorney. On the positive side, applicants wishing to expedite the
prosecution of their application may find the filing of a
divisional application attractive. Finally, applicants will need to
be aware of the potential for a hearing before IP Australia and the
additional costs involved should the objections that are raised
during prosecution not be resolved.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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