Introduction
In Australia, a divisional application may be filed to pursue claims of different scope from those allowed in an earlier application, so long as the subject matter is disclosed in the earlier application and the divisional application is timely filed. Unlike some jurisdictions, it is not necessary for a unity objection to have been raised in the earlier application to permit filing of a divisional. Nor is it necessary for the divisional application to be filed before the parent application is allowed. In addition, the parent application may itself be a divisional application, making a “daisy chain” or cascade of divisional applications possible.
These relatively liberal laws enable divisional applications to be used strategically to great benefit in Australia.
Requirements for Divisional Status
The requirements for claiming divisional status in Australia and relatively straightforward. To derive priority from the parent and be entitled to divisional status, at least one claim of the divisional application must define an invention that is disclosed in the parent in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art.
In addition, the applicant(s) for the divisional application must be the same as the applicant(s) for the parent application, or be entitled to the patent or an interest in it if the patent were granted, for example by way of assignment.
Deadline for Filing
In Australia, a divisional application must be filed within three months of the date of publication of acceptance (allowance) of the parent application. Therefore, like the United States, it is possible to ascertain the scope of claims allowed in the parent case before deciding whether to file a divisional application.
If a patent application is not accepted, a divisional application must be filed before the acceptance deadline.
Examination of Divisional Applications
A divisional application may be filed with the original claims (so as not to telegraph to competitors what subject matter is being pursued) or it may be filed with an amended claim set.
A Direction to Request Examination will issue quickly, likely within the first 6 weeks of filing a divisional application, giving the applicant 2 months to request examination. Therefore, an applicant may wish to consider requesting examination at the time of filing the divisional application, unless the aim is to defer examination for as long as possible.
Once an examination report issues on the divisional application, the Applicant will have 12 months to overcome all objections and achieve acceptance (allowance).
“Daisy-chain” Applications
Australian patent law permits the filing of a divisional application from a divisional application, i.e. it is possible to file a “daisy-chain” of divisional applications. However, care should be taken in choosing the claim set for third and subsequent divisional applications. The practice of IP Australia is to closely scrutinise first examination reports issued for divisional applications raising the same issues that were raised for a great grandparent. If the examiner believes that no progress is being made, IP Australia may manage the case to ensure a prompt resolution, for example set the case down for hearing.
Strategic Reasons to File Divisional Applications
Divisional applications are often filed to protect aspects of an invention that are not covered by the claims as accepted, for example a second invention in the case of a unity objection. However, unlike some other jurisdictions, it is not necessary for a unity objection to have been raised in the earlier application to permit filing of a divisional application. As a result, there are other strategic reasons to file divisional applications in Australia.
1. Failure to Gain Acceptance
The deadline for overcoming all objections and achieving acceptance of an Australian patent application is 12 months from the date of issuance of the first examination report. This deadline is not extendable. However, in circumstances where an application has not been allowed and the final deadline is approaching, it is possible to file a divisional application to continue prosecution, similar to filing a continuation application in the USA. In this instance, the divisional application must be filed before the deadline for acceptance.
2. Delay Acceptance
Similarly, a divisional application may be filed just prior to the final deadline to delay acceptance. This usually gains at least another 18 months to achieve allowance, depending on how quickly an examination report issues on the divisional application. Delaying acceptance may be useful, for example, if there is a global patenting strategy with the intention for Australia to “follow suit”, and equivalent applications in key jurisdictions have not yet granted.
3. Pursue Broader Claims
Another strategic reason to file a divisional application in Australia is to attempt to pursue broader claims in circumstances where the parent claims were narrowed to achieve allowance. So long as the claims in the divisional are of different scope from those allowed in the parent application, this is a permissible approach. Australian patent law prohibits grant of a patent application where the application claims an invention that is the same as an invention that is the subject of another patent made by the same inventor with the same priority date. The test is a relatively narrow one: “If the claims of the two specifications were located in the same specification, would there be redundancy of claiming?” Therefore, broader claims that include within their scope the claims of the parent case should be in principle allowable, subject to them meeting the other requirements for patentability. This is to be contrasted with the situation in Canada, for example, where there are very strict laws against double patenting.
4. Keep an Application Pending
In important cases, it may be commercially justified to keep a patent application pending in Australia. This provides more flexibility to amend should issues of patent infringement arise, as the scope of allowable amendments is greater in a pending application as compared with a granted patent. The divisional application may be used to pursue claims that define a form of the invention which may be specifically tailored to capture an alleged infringer.
5. Role in Oppositions and Litigation
For particularly valuable or contentious patents, a divisional application may be filed as an opposition/litigation tactic. Again, the divisional application may provide flexibility to amend if validity issues arise with the opposed or litigated patent. Such issues might potentially be rectified in the divisional.
In terms of timing, the opposition period for an Australian patent application expires on the same date as the deadline for filing a divisional application. Therefore, to ensure than a divisional application is pending in the event of an opposition, it is usually necessary to file a precautionary divisional application before it is known whether the parent application has been opposed. Oppositions are often filed at the last minute, and the IP Australia database is typically not updated with this information immediately.
6. Licensing Tool
A divisional application may be useful if there are commercial negotiations relating to the technology. In this case, it might be beneficial to move the technology that is being licensed into a separate divisional application. This may help clarify the licenced technology from any technology that is not being licensed. In addition, the potential licensee may wish to amend the claims of the divisional application to suit its commercial objectives.
Another Consideration: Best Method
As outlined in a recent blog article by Sarah Couper, Australian patent law has a somewhat unusual requirement that the patent specification must disclose the best method known to the applicant of performing the invention. Some Australian court decisions have found that a divisional specification must disclose this best method at the date the divisional application was filed. Accordingly, if the applicant has become aware of a better method of performing the invention since the parent application was filed, it may be necessary to include experimental details of this method when filing a divisional application. This needs to be considered on a case-by-case basis.
Important Differences Between Australia and NZ
There are some important differences in divisional law and practice in New Zealand, when compared with Australia.
In New Zealand the divisional application must be filed before the earlier application is accepted. Therefore, it is common practice in New Zealand to file a divisional application along with a response to the first examination report, as the application could then be accepted at any time. Alternatively, a deferral of acceptance could be maintained when the response is filed, so that the application cannot proceed to acceptance before a decision is made regarding filing a divisional application.
In addition, it is necessary to request examination of a divisional application in New Zealand within 5 years of the date of filing the original application. For example, for a New Zealand national phase of a PCT application, the effective deadline for filing a divisional application (or divisional of a divisional, etc.) is five years from the international filing date. Therefore, while “daisy chaining” is possible in New Zealand, there is a 5-year time limit.
Conclusion
Divisional applications are a useful tool in Australian patent prosecution. If you would like guidance on strategic filing of divisional applications in your particular circumstances, please contact us.
