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Australian divisional patent applications

Deadlines

The deadline for filing an Australian divisional patent application based on an Australian standard (20 year) patent application is the earliest of:

  1. the standard patent application lapsing, or being refused or withdrawn; or
  2. 3 months after the official advertisement of the acceptance of the standard patent application.

The deadline for filing an Australian divisional patent application based on an Australian innovation (8 year) patent is the earliest of:

  1. the innovation patent expiring, being revoked or ceasing; or
  2. 1 month after the official advertisement of the innovation patent passing examination.

New matter

An Australian divisional patent application can include and claim new matter and in this sense is analogous to a Continuation In Part (CIP) in the United States.

Best method

Up-to-date details of the embodiment that the applicant now prefers should be disclosed.

The specification must ‘disclose the best method…of performing the invention’ known to the applicant at the time of filing the divisional patent application. Case law indicates the degree of disclosure required depends on the nature of the invention and speaks of good faith as opposed to holding back information.

Examination should be requested at filing

An Australian divisional patent application filed without a request for examination is likely to be met (within a few weeks of filing) with an official Direction to Request Examination within 2 months of the Direction issuing. Requesting examination when filing the application avoids administration associated with the Direction. More on directions and requests for examination.

Original matter should be retained

It is good practice to ensure that all of the subject matter of the original patent application is disclosed in any divisional patent application, to preserve the basis for claiming that subject matter (e.g. by amendment and/or in another divisional patent application as part of a chain of applications).

It is sometimes convenient to:

  • file a divisional patent application using the specification of the first non-provisional patent application family; then
  • file amendments as required.

Can be based on a pct

An Australian patent application can claim divisional status from an international patent application (PCT application) designating Australia. The divisional patent application must be filed by the 31-month deadline. Unlike routine national phase entry, this enables new matter to be added. It also provides a convenient route to an innovation patent.

An innovation patent is an option

An Australian divisional patent application may be for an innovation (8 year) patent. Such an application may be advisable even after the successful prosecution of a standard patent application. Innovation patents:

  • are inexpensive;
  • are immune to lack-of-inventive step attack; and
  • preserve the option of expansive claim amendments.