If the parent application was filed within 12 months of the date of the relevant disclosure, the disclosure may also be disregarded for the purposes of considering the novelty and inventive step of claims of the divisional application entitled to the priority date of the parent. Where the applicant has invoked the grace period in relation to a citation with respect to the parent application, it is not necessary to raise the same citation in relation to the divisional application.

Acceptance

The parent application and the divisional application can be examined and accepted in any order. However, examiners should consider s64 and the possible need for a bar-to-grant in relation to the divisional, parent application and any other related divisional applications.

Considering Relative Cases During Examination

Examiners must consider the parent file and any other relative files during examination. A relative file is any file linked directly or indirectly because one or more is a divisional application. It includes, for example, 'grandparent' and 'cousin' cases.

Relative Case Under Opposition or Re-Examination, or Contains a Section 27, or Section 28 Notice

Examiners should consider material available from opposition proceedings, re-examination, s27, or s28 notices, any issues raised on file for the parent, or any relative case, and check if these apply to the divisional application.

Examination or acceptance of a divisional application can proceed if a relative case is subject to proceedings that have not concluded provided that examiners do not prejudge the proceedings. The divisional application report must not make direct comments on the proceedings of the relative case, even when the claims of the divisional application are the same as those of the relative case.

Where the circumstances are such that this condition cannot be met, the case must not be accepted, and instead referred to the Assistant General Manager (Oppositions).

It is particularly important that examiners consider the potential relevance of any decision which has been issued in respect of any relative application.

Section 32 or Section 36 Request

If a parent application is subject to a s32 or s36 request, examiners are to advise in an examination report on the divisional application that:

"Prima facie the entitlement of the nominated person has been brought into question because of the section 32/36 action on the parent. Until this dispute is resolved, other examination issues notwithstanding, the Commissioner cannot permit this application to proceed to acceptance."

This is to prevent a patent being granted for the divisional without the knowledge of the parent applicant who requested the s32 or s36 action.

Supervision, Case Management and Hearings of Divisional Applications

First reports issued for divisional applications raising the same issues that were raised for the great grandparent, should be reviewed by a supervising examiner. If the supervising examiner believes that no progress is being made, the case should be discussed with the Supervising Examiner (Oppositions), including whether to set the matter for hearing or case manage the application to ensure a prompt resolution of its status. In certain situations, it may be appropriate to also consider case management or setting matters for hearing where no progress is made in grandparent and parent applications.

Amendment of Patent Request – Conversion of Application to a Divisional

Either before or during examination, an applicant may seek to amend a patent request to convert an application to a divisional application. Such an amendment can be made under s104 and does not require replacement of the patent request form.

However, an amendment of a patent request to convert an application to a divisional application is not allowable:

if the application identified as the parent was filed after the application to be converted to a divisional (these requests should be referred to Oppositions);
after it has been accepted; or
after the period in which the application could have been filed as a divisional application, such as:
- after the parent application lapses, is refused or withdrawn; or
- after 3 months from the date of advertisement of acceptance of the parent application.

Where an amendment to the patent request is allowed, examiners should inform CEG of the change in status of the divisional application, and any changes in priority details. This can be done before acceptance by email, or at acceptance in Screen 3, ‘Bibliographic Amendments’ of the Acceptance Task (include s104 amendment item numbers, reference document ID and an informative comment).

Continuation Fees

Where a second divisional application is made from a first divisional, the date of payment of continuation fees is the date of filing of the original (grandparent) specification. The only exception to this is if the Commissioner has advised the applicant prior to 1 January 2000 that a different date applies.

For a divisional application based on two or more parent applications, the date of payment of continuation fees for the common divisional is the earliest date of payment of continuation fees of the parents.

For granted patents, the date of payment of renewal fees is the date the patent was recorded in the Register. Note, however, that for an innovation patent, a renewal fee that would otherwise be payable within 1 month after the grant of the patent is not required to be paid.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023

5.6.10.5 Issues specific to the Examination of divisional applications

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Grace Periods