HIP TIPS 4 - Divisional Patent applications in Australia and New Zealand – beware of the pitfalls

Australia and New Zealand have quite different practices regarding divisional patent applications. The following article provides some guidance into what is possible, and some of the common pitfalls that may be encountered.

Why file a divisional application?

A divisional may be filed for several reasons:

1)        In order to “restart the clock” during prosecution if the Examiner’s objections have not been overcome by the acceptance deadline. This is similar to a US Continuation application;

2)        In order to “divide” the application if there are multiple inventions described in the specification. In practice this may be done to overcome a lack of unity objection;

3)        To protect an invention that differs from the one originally disclosed, for example where the invention has evolved during R&D. This type of divisional application is similar to a US continuation-in-part application (CIP). It should be noted that at least one claim of the divisional application must be supported by the parent specification as originally filed. Furthermore, any claim directed to subject matter that was introduced into the specification when the divisional application was filed will have a priority date being the divisional filing date.

4)        To keep an application pending. This preserves the applicant’s rights to broaden or otherwise amend the claims at a later date. This can be very useful when there is a possible infringer, or if the applicant anticipates that the parent applicant might be opposed.

Australia

Divisional filing deadline

Australian practice permits divisional patent applications to be filed before either:

●        the acceptance deadline (12 months after the date of the first report); or

●        up to 3 months after the acceptance of the parent application is formally advertised.

Australian divisional applications may be filed in a cascading manner, meaning subsequent divisional applications can be filed from an earlier divisional application, and this is valid so long as each new divisional is filed within the above noted deadlines.

Double patenting

Section 64 of the Australian Patents Act provides a bar to grant for two patents claiming the same invention. The test applied is if the claims of the two specifications were located in the same specification, would there be redundancy of claiming. In practice the Australian Patent Office will typically accept small differences in claim scope between the divisional and parent applications as being sufficient to avoid a double patenting objection.

New Zealand 

Divisional filing deadline

New Zealand has a 5-year deadline for filing divisional applications, calculated from the filing date of the original parent (or grandparent). This means that within 5 years of the first New Zealand standard patent application being filed, a decision needs to be made regarding whether any divisional applications are desired. It is not permissible to cascade additional divisional applications beyond the 5-year deadline.

By the 5-year deadline, any desired divisional application(s) must have been filed, and examination requested.

In practice, this means that it is often necessary to decide whether divisional protection is required before the parent has undergone substantive examination in New Zealand.

One way to mitigate the inflexibility regarding the 5-year deadline is to request examination of the parent application at lodgement. This normally results in the parent application being examined sooner, in advance of the 5 year deadline. This enables the applicant to file any divisional applications taking into consideration the New Zealand Examiner’s position on the parent claim set, and whether there are unity issues.

Before acceptance of the parent application

In addition to the 5-year rule, a New Zealand divisional application must be filed before the parent is accepted. For this reason, when we file New Zealand Patent applications, we request that the acceptance is postponed. This prevents a response to an examination report resulting in acceptance, as the postponement can be maintained until the applicant has considered if a divisional application is desired.

The effect of the New Zealand 5-year deadline in practice limits the ability to use divisional applications to restart prosecution clock or to keep an application pending for a significant period of time.

Double patenting

The New Zealand patent legislation also has a double patenting bar. Historically double patenting was deemed to occur when a divisional claim fell wholly within the scope of a claim accepted in the parent, or when an accepted parent claim was wholly within the scope of a claim in the divisional child.

However, Regulation 82 was amended in 2021 and now states “ …the divisional application must not include a claim or claims for substantially the same matter as accepted in the parent application”

The IPONZ Examination Manual has been updated regarding divisional-parent claim overlap under Regulation 82. As amended, a double patenting objection should be raised only if one or more claims of a divisional application have substantially the same scope as one or more claims of its accepted parent application (or vice versa).

The double patenting test set out in the updated Examination Manual is a “double infringement” test and asks:

●        Would an infringement of a claim of the first application also be an infringement of a claim of the second; and

●        Would an infringement of a claim of the second application also be an infringement of a claim of the first?

If the answer to both questions is yes, then the claims are considered to be “for substantially the same matter” and double patenting occurs.

If you would like more information on divisional patent practice in Australia or New Zealand, please contact us.

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