2.10.3 Time Limits for Filing Applications

Note: The information in this part only applies to divisional applications filed before 15 April 2013.  For all other divisional applications, see 2.10.3A Time Limits for Filing Applications.

In this topic:

Divisional Application Filed Prior to Grant of Parent Patent

Under sec 79B, an applicant may make a divisional application for either a standard patent application or an innovation patent application before the grant of the parent application (either a standard patent application or an innovation patent application).  

Parent Application is for a Standard Patent

The divisional application may be filed at any time before grant of the parent, subject to the status of the parent (see 2.10.4 Status of Parent).  However, under the provisions of sec 79B(1)(b), where the divisional application is filed more than 3 months after the parent was advertised as accepted, the divisional application must be directed to an invention falling within the scope of the claims of the accepted parent specification (see 2.10.5 Subject Matter).

Note: For the purposes of applying the time limit set out in sec 79B(1)(b), the date of filing of the divisional application means the date of the application, regardless of whether there was any reference, formal or informal, to sec 79B or sec 79C in that original application. Consequently, in certain circumstances it is possible for an application to be converted to a sec 79B or sec 79C application by amendment of the patent request, even though the first invoking of sec 79B or sec 79C occurs only after grant of the parent, or after the parent has lapsed (see 2.10.10 Amendment of Patent Request – Conversion of Application to a Divisional and 2.10.10A Amendment of Patent Request – Conversion of Application to a Divisional).

Parent Application is for an Innovation Patent

The divisional application may be filed at any time before grant of the parent, subject to the status of the parent (see 2.10.4 Status of Parent).  

However, where the parent application is itself a divisional of an innovation patent under sec 79C (grandparent), sec 79B(1A) provides that a further divisional application (either an innovation or standard patent application) cannot be made prior to grant.  This prevents a standard patent application being divided out from a granted innovation patent, either directly, or by being divided out as an application for an innovation patent and then being converted to an application for a standard patent.

Divisional Application Filed After Grant of Parent Patent

Parent is a Standard Patent

There is no provision for filing a divisional application where the parent is a granted standard patent.  

Parent is an Innovation Patent

After grant of an innovation patent, the patentee can file a divisional application for another innovation patent (sec 79C).  However, the divisional application must be filed during the period that commences on the date that examination of the parent begins, and finishes 1 month after the date of advertisement of certification of the parent patent (also referred to as the date of publication of a notice of the occurrence of examination), subject to the status of the parent (see 2.10.4 Status of Parent).

In this context, the divisional application must be for a ‘further invention’ disclosed in the parent, i.e. a different invention.  The purpose of this requirement is to allow patentees to file divisional applications for further inventions during examination of the parent (or shortly thereafter), for example when lack of unity issues arise or more than one invention is disclosed but not claimed.  It is not intended to provide a general post-grant divisional mechanism.

Examination Practice

If a time limit in respect of a divisional application is not met, an objection should be taken that the application is not entitled to divisional status.

Where an application purports to be a divisional application, but has not been filed within the relevant time limits, examiners should check whether the time for filing of the application has been extended. If an extension of time has been sought and granted in relation to the filing of the application, then the application will satisfy the timing aspects. If a request for an extension of time has not been processed, the matter should be immediately referred to the Assistant General Manager (OEP) via a supervising examiner.