discontinue the practice of reducing the response time frame for divisional applications on which an objection is raised in the first report for the same, or substantially the same, reason as an objection was raised in the report on the parent or other ancestor, i.e. the standard objection based on the former PERP code H40 should no longer be used for first reports. Where a first report has already been issued with a reduced response time frame, examination should proceed in accordance with the case management approach and reduced response time frames can continue to be used at further report stage where appropriate.
discontinue the expediting of divisional applications as a matter of routine and accord them the same priority as other examination work.

The filing of divisional applications can create significant uncertainty in the scope of patent rights that may be associated with a particular innovation. For this reason, the Commissioner has adopted a case management approach to the examination of divisional applications and their related parent applications intended to ensure prompt resolution of the status of the applications, particularly where the claimed subject matter of the divisional application is the same as its parent. Consequently, the following case management practices apply generally to the examination of divisional applications for standard patents:

When examining a divisional application, examiners should check for any related unexamined applications having an examination request on file and examine these together with the divisional application, where possible.
Special considerations apply to the examination where:
- The parent application (or other ancestor, e.g. grandparent) was examined and an adverse report issued (whether or not the application was subsequently amended and/or accepted).
- An objection is raised in the first report on the divisional application for the same, or substantially the same, reason as an objection was raised in the report on the parent or other ancestor. In this regard, it is the existence of the same grounds for objection that is significant, rather than the wording or statutory basis of the objection used. (This includes an objection that there is no notice of entitlement, even when that was the only objection raised in relation to the relevant ancestor application).
In these cases, the first report is to include the statement:

“Objection(s) <1 and 2> of my report are based on the same grounds objected to in the examination of patent application <number>. Please note that if a response overcoming those objections is not filed within two months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If intending to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above.”

This text will automatically appear in the DocGen template when the option ‘Yes’ is selected at the ‘Is this a Divisional Application with objections repeated from the Parent application?’ prompt.

Examiners must also advise Patent Oppositions (via email to ohl@ipaustralia.gov.au) that the report has issued and indicating the application number and date of the first report. Patent Oppositions will diary the date and call up the application for review after two months. If no response has been filed, the Supervising Examiner Patent Oppositions will determine what course of action to take, including setting the matter for hearing. Any inquiries from the applicant or attorney about the statement or a request for extension of the two month period should also be referred to the Supervising Examiner Patent Oppositions.
If a response is received within two months, examiners should make a decision as to whether or not the response is a serious attempt to meet the objections raised in the first report.
A serious attempt need not overcome all the objections raised in the first report, however it must make significant progress towards gaining acceptance. In this circumstance, examiners should issue a normal further report or, if the response overcomes all the objections, accept the application. As soon as this decision has been made, examiners should advise Patent Oppositions (via email to ohl@ipaustralia.gov.au) that they will be accepting the case, or that a normal further report will be issued and the case can be returned to the normal examination cycle.
If examiners consider that a response is a not serious attempt, then they should discuss the case with a senior examiner or supervising examiner. If, after this discussion, the joint opinion is that the response is not serious, examiners should send an email to the Supervising Examiner Patent Oppositions stating that a response has been received, but that after consultation, the joint opinion is that the response is not serious. The Supervising Examiner Patent Oppositions will then determine an appropriate course of action.
If there remains doubt about whether the response is serious or not after discussion within the examination section, examiners should consult the Supervising Examiner Patent Oppositions in person.
Any other doubts as to whether or not to adopt the case management approach should also be referred to the Supervising Examiner Patent Oppositions.