2.10.1A Application

Date Published

Note: The information in this part only applies to divisional applications filed on or after 15 April 2013.  For all other divisional applications, see 2.10.1 Application.

General

A divisional application is a further complete application made from a "parent" application, or a "parent" innovation patent, under the provisions of sec 79B or sec 79C.

The parent application:

  • can be an application for a standard patent or an innovation patent.
  • may itself be a divisional application.
  • may be a PCT application.
  • cannot be a provisional application.

It is also possible for a single divisional application to be made in respect of two or more different parent applications.

Further information on the requirements for filing a divisional application and priority date considerations is provided in:

Applicant and Inventors

The applicant for the divisional application must be the same as the applicant of the parent application, or the patentee of the parent patent. However, examiners should note that sec 79B defines an "applicant" as having the same meaning as sec 38.  Therefore, an applicant includes a person entitled to make a request under sec 113. If the applicants are different, there should be a clear entitlement under sec 113. This does not require that an actual request under sec 113 is made, but rather that the evidentiary requirements to warrant a sec 113 direction are met (see 2.6.4.2 Section 113 Amendments (Assignment, Agreement or Operation of Law)). Otherwise, an objection to the difference in applicants must be taken.

Where a parent application has joint applicants, all co-applicants need to apply for the divisional application. The one exception is where a co-applicant can provide evidence of an assignment of the other co-applicant's part interest in the parent application.

In principle, it is possible for an invention which is the subject of a divisional application to have different inventors to those associated with the invention which is the subject of the parent application. This applies even where the specifications of the parent and divisional are the same. Examiners should therefore assume that any information provided in this regard is correct.

Statement of Entitlement

Where the applicant of the divisional application is the same as the applicant of the parent application, or the patentee of the parent patent, the applicant does not need to state their entitlement to make the divisional application.  

Where this is not the case, the applicant must state that the person nominated for the grant of the patent is entitled to make a request under sec 113 in relation to the parent application.  In this regard, a statement provided with the request for examination will suffice.

A statement, where required, must be filed in order for the application to proceed as a divisional application.

Patent Request

The patent request must invoke the provisions of sec 79B or sec 79C at the time of filing the divisional application.  Thus, the patent request must indicate that the application is a divisional application under sec 79B or sec 79C and state the number of the parent application/patent.  

COG will check that these requirements have been met at filing.  However, where examiners become aware of any issues during examination, e.g. the parent application number is incorrect, these should be raised in the report.

Where a request does not invoke sec 79B or sec 79C, but there is evidence on file to suggest that the applicant intended to invoke the provision (e.g. the applicant indicates that the application is a divisional in an accompanying letter), the application should be treated as a divisional application and an objection taken to the request.