The Australian Patent Office has been progressively implementing
measures to expedite examination of divisional applications.
Directions to request examination now issue within two months of
filing and official reports issue within two months of examination
being requested (compared to 24 months and 14 months, respectively,
for non-divisional standard patent applications).
The Patent Office has recently introduced case management
procedures that expedite examination of divisional applications
further. When an objection is raised against a divisional
application that was previously raised in relation to the parent
application, the applicant now has two months in which to overcome
the objection. Otherwise, following a hearing, the Commissioner may
direct amendment of the application under section 107 or refuse the
application under section 49(2) of the Patents Act.
When these new patent office rules came into effect in February
2011, it was somewhat unclear as to how they would be implemented
by examiners. Some guidance is provided in the Patent Office
Manual of Practice and Procedure:
if a response is not received by the two-month deadline, the
Patent Office will set the matter for a hearing;
if a response is received by the two-month deadline that
overcomes the objection, examination will continue as normal and
the applicant will have 21 months from the date of issuance of the
first official report to place the application in order for
if a response is received by the two-month deadline that makes
some progress but does not completely overcome the objection, the
Patent Office may elect to allow examination to continue to a
further report before setting the matter for a hearing.
It is our experience that, provided the applicant acts in good
faith and makes a genuine attempt to address the objection, the
matter is unlikely to be set for a hearing - rather, should the
examiner maintain the objection, it is likely that a further
official report will issue and a new deadline will be set. We have
been informally advised that if an examiner believes a submission
does not "seriously" attempt to address the objection, an
alternative to setting down a hearing is to issue a shortened
deadline for responding to the official report.
Should a hearing notice issue, the applicant will have
one month in which to file a submission. If amendments are made
that overcome the objection, the Commissioner will not proceed with
the hearing. However, if no submission is received or the
amendments do not fully overcome the objection, the matter will be
passed to a hearing officer to issue a written decision. As
discussed above, the Commissioner may refuse the application or
Since implementation of the new rules, all 26 hearings
to date have been for cases in which a response was not lodged by
the two-month deadline. In all cases, submissions were not made in
response to the hearing notice and the applications were
To ensure the broadest possible disclosure is included in the
specification, divisional applications are commonly lodged in the
same form in which the parent application was filed. Hence the
claims of a divisional application will often be identical to those
of the parent. Once a direction to request examination issues for
the divisional application (as discussed above, this usually occurs
two months after the application is filed), the applicant has six
months to comply. We recommend that the claims of the divisional
application be amended when requesting examination. This will avoid
triggering the two-month deadline for responding to the first
Examiner's Report - thereby conserving the costs associated
with forwarding the Report and preparing a formal response.
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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