Divisional Patent Applications – Changes to Examination
The Australian Patent Office has recently implemented changes to the procedure for handling examination of divisional patent applications, as part of a broader “IP Reform” agenda.
The following ‘case management’ procedure will apply to divisional applications:
- Requests for examination of all divisional patent applications will be expedited, meaning examination reports will issue in around one month of a request for examination being lodged.
- Where the parent patent application (or other ancestor) was examined with an adverse report being issued and an objection is raised in the first report of the divisional patent application for the same or substantially the same reason as an objection raised in the parent patent application, then a response overcoming the objection must be lodged within two months of the report or the matter will be set down for a hearing.
- An appeal of the hearing officer’s decision to the Federal Court is available.
In circumstances where a response is lodged and progress is made but the objection has not been overcome, examination may be allowed to continue to a further report before being set down for a hearing.
These changes to the examination procedure for divisional patent applications are clearly aimed at curbing the practice of re-filing rejected patent applications as divisional patent applications to simply prolong patent prosecution and are aimed at reducing delays in achieving a resolution of either acceptance or refusal.
This new procedure will make delaying prosecution more difficult and potentially significantly more expensive if the matter proceeds to hearing. It will also adversely affect the practice of combining multiple inventions in a single patent application with the intention of dividing these inventions out at a later stage in order to delay costs.
Please contact Cotters if you would like any further information about the changes or if you wish to request examination on any pending patent applications.
By Marcus Dalton
Cotters Patent & Trade Mark Attorneys
8 November 2010
