5.6.10.4 Status of the Parent

Date Published

Overview

The parent application must be in force at the time of filing the divisional. Thus, a divisional application cannot be made where the parent application has lapsed, been refused, or withdrawn.

However, lapsing, refusal, or withdrawal of the parent application, or cessation of the parent patent, after filing of the divisional application does not invalidate the filing of the divisional or its entitlement to earlier priority dates.

Examiners should also check whether the time limits for filing a divisional application have been met.

Lapsing of Parent

If the parent application of a divisional application is in a state of lapse due to the non-payment of continuation fees, and the continuation fee is subsequently paid, the divisional application can proceed. If the fee has not been paid before examination of the divisional application, examiners are to object that the application is not entitled to divisional status.

Where the parent application lapses on a weekend or public holiday through failure to gain acceptance in time, a divisional application may be filed on the next working day without the need to obtain an extension of time under s223.

Note that in certain situations, the invoking of s79B does not need to occur before lapsing of the parent. Thus, an application may be converted to a divisional application by amendment of the patent request, even though the parent has lapsed. Such an amendment is only allowable in particular circumstances (see 5.6.10.5 Issues specific to the Examination of Divisional Applications). ​​​​​​​

Parent is a PCT Application

A PCT application which designates Australia can be a parent application for a divisional application, whether it enters national phase in Australia or not. However, the PCT application must not have lapsed, been refused, or withdrawn at the time the divisional application is made.

If the parent PCT application is not OPI, or is not available to the Office, examiners should object that the application cannot proceed as a divisional application before:

  • WIPO communicates the PCT application pursuant to Article 20 of the PCT;
  • the applicant requests entry of the PCT application into the national phase in Australia; or
  • the applicant supplies a copy of the PCT application, with a declaration that it is a true copy of the application as filed and that it has not been either withdrawn or deemed withdrawn before the divisional application was filed.

Since the parent application is not available, examination must be conducted on the assumption that the priority date is the date of filing.

Where the applicant is unable to provide a copy of the PCT application, a new patent request that omits the request for divisional status will need to be filed before acceptance.

Note that a parent PCT application is considered to be available if it is accessible through RIO or Patentscope. If the parent application has not entered the national phase, it will need to be retrieved from Patentscope.

PCT Application is in a Foreign Language

Where the parent application is a PCT application that is in a foreign language, and there is no translation on file, examiners should request that the applicant file a translation to establish the divisional status of the application under examination. However, examination should nevertheless continue, based on the assumption that the priority claim is valid. Once the translation is received, it should be placed on the parent application file if it exists and if not, it should be placed on the divisional application file. If the applicant declines to file the translation, the matter should be referred to the Assistant General Manager (Oppositions).

Parent is an Application for a Patent of Addition

Where the parent application is for a patent of addition, the date of the patent granted on the divisional application only goes back to its parent (additional) application, and not to the date of the parent of the additional application (that is, the grandparent of the divisional application). A similar situation applies to the renewal fee date and the priority date.

Thus, while the term of the divisional application may expire after that of the grandparent, it is conceivable for the divisional application to claim matter that was disclosed in the parent, and for which an inventive step objection applies based on the grandparent. In this situation, it may be possible to overcome the problem by making the divisional application an additional application to the grandparent.  ​​​​​​​