5.6.10.7 Annex A - Procedural Outline to Divisional Application Examination

Date Published


1.

Consider all 'relative' case files (Registry Manager to supply paper cases).

5.6.10.5 Issues specific to the Examination of divisional applications (Considering Relative Cases During Examination)

2.

Check type of parent (e.g. not provisional).

5.6.10.1 Requirements to Claim Divisional Status

5.6.10.4 Status of the Parent

3

Check that the parent application had not lapsed or been refused or withdrawn at the time of filing of the divisional application.

5.6.10.1 Requirements to Claim Divisional Status

5.6.10.4 Status of the Parent

4.

Check that the divisional application was filed within the relevant time limit.

5.6.10.3 Time Limits for Filing

5.

Check that the patent request invokes sec 79B or sec 79C by stating the number of the parent application.

5.6.10.1 Requirements to Claim Divisional Status


The applicant for the divisional application must be the same applicant as for the parent application, the patentee of the parent innovation patent, or a person entitled to make a request under sec 113 ("Persons claiming under assignment or agreement").

5.6.10.1 Requirements to Claim Divisional Status

6.

Check entitlement.

5.6.10.1 Requirements to Claim Divisional Status

7.

If the patent request indicates that the application is a Convention application, check that it satisfies the Convention application requirements.

5.6.10.2 Priority Entitlement

8.

Check that the claims of the divisional application are directed to appropriate subject matter.

5.6.10.1 Requirements to Claim Divisional Status (Subject Matter)

9.

Check that there is no objection under sec 64(2) with respect to the parent application.

5.6.10.1 Requirements to Claim Divisional Status (Subject Matter)

5.6.9.10 Double patenting, Multiple Applications - s.64(2), 101B(2)(h)

10.

Check whether the grounds of objection for the divisional application are the same or substantially the same as in the parent.  (Note: This practice has been temporarily suspended).

8.10.6 Case Management of Divisional Applications

11.

Check all 'relative' case file(s) for any relevant material filed in relation to sec 32 or sec 36 requests, opposition, re-examination or notices under sec 27 or sec 28, which may give rise to an objection on the divisional application.

5.6.10.5 Issues specific to the Examination of divisional applications (Considering Relative Cases During Examination)

12.

Where an amendment converts the application to a divisional, ensure this information is recorded in PAMS.

5.6.10.5 Issues specific to the Examination of divisional applications (Conversion of Application to a Divisional)

13.

Where the case is supervised, submit all paper ancestor case file(s) with the divisional case file.

5.6.10.5 Issues specific to the Examination of divisional applications (Considering Relative Cases During Examination)

14.

Where the divisional application has great grandparent or earlier ancestors, the first report is to be reviewed by a supervising examiner.

5.6.10.5 Issues specific to the Examination of divisional applications (Supervision, Case Management and Hearings of Divisional Applications)