Monday, May 1 2023   \  Published by Spruson & Ferguson.

Important Changes to Management of Australian Divisional Patent Applications

Important Changes to Management of Australian Divisional Patent Applications

What is a divisional patent application?

A divisional patent application may be filed to divide a patent application into two or more patent applications from a “parent” application. The divisional patent application will proceed as a separate application and undergo separate examination. A first divisional patent application is termed a “child” application, and a second or further divisional patent application is termed a “grandchild” application (and “great-grandchild”, etc, for further divisionals) if derived from the first divisional application, although this nomenclature is somewhat informal. In some jurisdictions this practice is termed a “cascade of divisional applications”. A divisional patent application usually inherits the priority rights from the parent application, which in turn derives priority rights from any priority application(s).

Reasons to file a divisional patent application

There are many reasons why an Applicant would want to file a divisional application. For example:

- to pursue a second invention that is disclosed in the parent patent application, i.e., if a “unity” objection is taken during prosecution the second invention will need to be removed from the claims, and then it will be possible to file a divisional application to pursue that second invention,

- to pursue claims that define a narrower form of the invention, and which may be specifically tailored to capture an alleged infringer,

- if there have been issues during prosecution which have caused the allotted time within which to prosecute the application to acceptance/allowance to run out (e.g., novelty, inventive step or manner of manufacture objections),

- as an opposition/litigation tactic – it is a strategy to file divisional applications immediately before acceptance of valuable or contentious patents, and/or

- to delay acceptance because the equivalent applications are not yet allowed in other jurisdictions, such as Europe, US, China or Japan.  Read more

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