The parent application/patent must be in force at the time of filing the divisional. Thus, a divisional application invoking sec 79B or sec 79C cannot be made:

where the parent application is for a standard patent or an innovation patent: after the parent application has lapsed, or been refused or withdrawn.
where the parent is an innovation patent, and the divisional application is also for an innovation patent: after the term of the parent patent has ended, or the patent has ceased or been revoked.

However lapsing, refusal, or withdrawal of the parent application, or cessation of the parent patent, after filing of the divisional application does not invalidate the filing of the divisional or its entitlement to earlier priority dates.

Note: Examiners should also check whether the time limits for filing a divisional application have been met (see 2.10.3 Time Limits for Filing Applications).

Lapsing of Parent

The fact that a parent application is in a state of lapse due to the non-payment of continuation fees does not necessarily invalidate the filing of a divisional application. If the continuation fee is subsequently paid, the application can proceed as a divisional application. If the fee has not been paid before examination of the divisional application, examiners are to object that the application is not entitled to divisional status.

Where the parent application lapses on a weekend or public holiday through failure to gain acceptance in time, a divisional application may be filed on the next working day without the need to obtain an extension of time under sec 223 (see sec 222A).

Note: In certain situations, the invoking of sec 79B or sec 79C does not need to occur before lapsing of the parent. Thus, an application may be converted to a divisional application by amendment of the patent request, even though the parent has lapsed. Such an amendment is only allowable in particular circumstances (see 2.10.10 Amendment of a Patent Request – Conversion of Application to a Divisional and 2.10.10A Amendment of a Patent Request – Conversion of Application to a Divisional).

Parent is a PCT Application

A PCT application which designates Australia can be a parent application for a divisional application, since a PCT application is treated as a complete application under the Act. This applies regardless of whether the PCT application enters the national phase in Australia. However, the PCT application must not have lapsed, been refused or withdrawn at the time the divisional application is made.

Circumstances may arise where the parent PCT application is not OPI, or is not available to the Office. In this situation, examiners should object that the application cannot proceed as a divisional application before:

WIPO communicates the PCT application pursuant to Article 20 of the PCT; or
the applicant requests entry of the PCT application into the national phase in Australia; or
the applicant supplies a copy of the PCT application, together with a declaration that it is a true copy of the application as filed and that it has not been either withdrawn or deemed withdrawn before the divisional application was filed.

Since the parent application is not available, examination must be conducted on the assumption that the priory date is the date of filing.

Examiners should note that regardless of the above, if the nominated PCT application was withdrawn under the PCT before the filing date of the divisional application, that application is not entitled to divisional status.

Where the applicant is unable to provide a copy of the PCT application, a new patent request that omits the request for divisional status will need to be filed before acceptance.

[see also PERP code H3]

Note: A parent PCT application is considered to be available if it is accessible through PAMS, Patentscope or INTESS. If the parent application has not entered the national phase, it will not be available through PAMS and will need to be retrieved from Patentscope or INTESS. For further information on this process, see 5.16.4.3.15 What do I do When the Parent of a Divisional is not Available Through PAMS.

PCT Application is in a Foreign Language

Where the parent application is a PCT application that is in a foreign language, and there is no translation on file, examiners should request that the applicant file a translation in order to establish the divisional status of the application under examination. (For translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided). However, examination should nevertheless continue, based on the assumption that the priority claim is valid. Once the translation is received, it should be placed on the file of the parent application, provided such a file exists. Where it does not, the translation should be placed on the file of the divisional application. If the applicant declines to file the translation, the matter should be referred to the Assistant General Manager (OEP).

Parent is an Application for a Patent of Addition

Where the parent application is for a patent of addition, the date of the patent granted on the divisional application only goes back to its parent (additional) application, and not to the date of the parent of the additional application (i.e. the grandparent of the divisional application). A similar situation applies with regard to the renewal fee date and the priority date.

Thus, while the term of the divisional application may expire after that of the grandparent, it is conceivable for the divisional application to claim matter that was disclosed in the parent, and for which an inventive step objection applies based on the grandparent. In this situation, it may be possible overcome the problem by making the divisional application an additional application to the grandparent.