Recent legislative changes introduced in Australia from 15 April
2013 by the Intellectual Property Laws Amendment (Raising the Bar)
Bill 2011 have changed the deadlines for filing divisional
Previously, a divisional application could be filed at any time
up until grant of the parent application (although the claims of a
divisional application lodged three months after advertised
acceptance of the parent were required to fall within the scope of
the accepted claims of the parent). This allowed the applicant of
an opposed application to file a divisional application at any time
during opposition proceedings – providing a safeguard in case
the opposition was successful.
Additionally, it was previously possible to convert a standard
patent application into a divisional application so long as the
application to be converted could have been filed as a divisional
of the nominated parent on its original filing date. This resulted
in a situation where an application could be converted into a
divisional after grant of the parent.
The changes to Section 79B of the Patents Act 1990 and
Regulation 6A.1 of the Patents Regulations 1991
the time of filing of divisionals to within 3 months of
acceptance of the parent; and
the conversion of an application into a divisional to within 3
months of acceptance of the parent or no later than acceptance of
As the deadline for filing a divisional application now
coincides with the deadline for lodging a Notice of Opposition,
divisional applications can no longer be filed or converted during
opposition proceedings. Accordingly, should applicants have any
reason to suspect that their patent application may be opposed, it
is highly recommended that a precautionary divisional application
be filed within three months of advertised acceptance.
The changes for divisional applications only relate to
deadlines. The scope of the claims of a divisional application may
still overlap with that of the parent. Further, in relation to
pharmaceutical patents, an extension of term can still be obtained
for both a parent and its divisional child based on a single
registration of a product on the Australian Register of Therapeutic
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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