Protecting New Embodiments with Divisional Patent Applications

QUESTION

We would like to file a convention patent application in Australia based on US provisional patent application No. 61/XYZ filed on March 22, 2010.

However, it will be necessary to add additional examples in order to support the scope of the claims. In the USA we intend to do so by filing a Continuation-In-Part (CIP) application in about 3 months from now.

Please advise whether you have a similar mechanism in Australia which would allow us to add the new matter to the specification of an Australian patent application.

ANSWER

Unlike many other jurisdictions, it is possible to add new matter into the description section of an Australian patent application after it has been filed. However, the amendment must not result in anything being claimed that was “not in substance disclosed” at the time the Australian application was lodged. Even though the wording of the claims may be left unchanged, adding new examples into the description is nevertheless likely to expand the scope of the claims. Indeed that would be the purpose of the amendment in the present case.

Consequently, in my opinion it would not be wise to file the patent application with only the old material and then subsequently amend the description to include the new material, because doing so may be deemed to result in the claiming of matter that was “not in substance disclosed” at the time the application was lodged even though the claims are left unamended.

Therefore, I believe one of the following two options should be adopted (I understand that it may be impossible to proceed with option 1) at this time if the specification with the new material is not yet available):

1. If you have the CIP patent specification prepared now, including boththe old matter and the new matter, then we can file it as a convention application with the Australian Patent Office by 22 March 2011. The priority date of the older matter claims in the Australian application, which I understand are fairly based on the US provisional patent application, will be 22 March 2010. The priority date of the new matter claims will be the Australian filing date, e.g. say 22 March 2011. Since there is a one year grace period in Australia for prior public disclosures made by the inventor or their successors in title, any public disclosure of the new matter that was made by the inventors after 22 March 2010 will not be invalidating of the new matter claims.
2. If you do not have the CIP patent specification prepared now then you should send us the specification in the form that you do have it for filing by 22 March 2011 so that we can file the application claiming priority from the US provisional patent application. Subsequently, an Australian divisional application, including all of the old matter and all of the new matter (very similar to a US continuation-in-part (CIP)) can then be filed from the Australian patent application (the parent application). The parent application can then be allowed to lapse.

The divisional application will maintain the priority date of 22 March 2010 in respect of claims for the old matter. Claims for the new matter will have the priority date of either the Australian divisional application’s filing date or, if we claim priority from the proposed US CIP, the filing date of the US CIP application.

It is very important that no documentary publication or use occurred more than one year before the filing of the divisional application (the one year grace period) that would render claims to the new matter either lacking in novelty or inventive step. (If such a disclosure has occurred but it is relevant only to inventive step and not novelty, then it may be possible to keep the parent Australian application in place and subsequently apply for a Patent of Addition for the new matter. The claims of a Patent of Addition are required to be novel but do not have to be inventive.)

The simplest procedure would be option 1) above. That is, forward the specification including both the old matter and the new matter for filing with the Australian Patent Application on or before 22 March 2011. If that is not possible though, then it is important that we file the application with the specification as it stands on or before 22 March 2011. Otherwise the claims to the older matter in the subsequent divisional application will not enjoy the 22 March 2010 priority date.

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