2.10.10A Amendment of Patent Request - Conversion of Application to a Divisional

Note: The information in this part only applies to:

• requests to amend filed, or deemed under reg 10.6A to be filed, on or after 15 April 2013, for standard patent applications where a request for examination was not filed before 15 April 2013.
• requests to amend filed on or after 15 April 2013 for innovation patent applications.

For all other requests to amend, see 2.10.10 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 amendment can be made under sec 104 and does not require replacement of the patent request form (see 2.23.13.1 Amendment of Patent Request and 2.20.3.1 Patent Request Form).

However, an amendment of a patent request to convert an application to a divisional application is not allowable in certain circumstances (reg 10.2B(4), reg 10.2B(5) and reg 10.2B(6)).

Thus:

• An application cannot be converted to a divisional application after it has been accepted under sec 49 (standard) or sec 52 (innovation).
• An amendment to convert an application to a divisional application can only be allowed within the period in which the application could have been filed as a divisional application under sec 79B or sec 79C (as in force for divisional applications filed on or after 15 April 2013).

For example, where the parent application is for a standard patent, an amendment converting the application can only be allowed in the period ending when any of the following happens:

• the parent application lapses;
• the parent application is refused;
• the parent application is withdrawn; or
• the period ending 3 months from the date of advertisement of acceptance of the parent application (also referred to as the date of publication of a notice of acceptance of a parent application) expires.

Similar considerations apply for requests to convert where the parent is an innovation application or patent

Where an amendment to the patent request is allowed, examiners should inform COG of the change in status to a divisional application, and any changes in priority details, as outlined in 5.5.4 Invention Details.

Note: Regulation 10.2B(5) refers explicitly to sec 79B(3) of the Act. Although sec 79B(3) applies to divisional applications filed on or after 15 April 2013, the time period for the purpose of reg 10.2B(5) applies regardless of when the application for which the amendment request is made was filed. Consequently, if:

• more than 3 months has passed from the notice of acceptance of the nominated parent application; and
• the current application was filed before 15 April 2013;

the amendment is not allowable.

A proposed amendment of a patent request to convert an application to a divisional application where the application was filed before the application identified as the parent, is of no effect. Further applications under sec 79B and sec 79C can only be made within the period specified in those sections. Requests of this nature should be referred to Patent Oppositions.