2.10.5A Subject Matter

Note: The information in this part only applies to divisional applications filed on or after 15 April 2013.  For all other divisional applications, see 2.10.5 Subject Matter.

Sections 79B and 79C place certain limitations upon the subject matter which can be claimed in a divisional application.

A divisional application may include and claim matter which was not disclosed in the parent where it is filed:

• before acceptance of a parent application; or
• within 3 months from the date of advertisement of acceptance of a parent application for a standard patent (also referred to as the date of publication of a notice of acceptance of a parent application).

However, in order to derive priority from the parent (and be entitled to divisional status), at least one claim of the divisional application must define an invention that is disclosed in the parent in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art (see 2.12.1.1A Priority Date of Claims).  Any claim of the divisional which is not disclosed in a clear enough and complete enough manner in the parent is not objectionable for this reason alone, but may lack novelty or an inventive/innovative step due to its non-entitlement to an earlier priority date.*  Examiners should note that in this situation the parent specification may be a potential citation.

*Note: Where a claim is not entitled to an earlier priority date, examiners will need to consider whether a search of the claim is warranted.  In general, the search should cover the period extending from the priority date of the parent to the filing date of the divisional.  However, there may be circumstances where a search of a greater time period is required.

Where it appears likely that the earlier priority date can be restored, for example by a straightforward amendment to the claim, it may be more appropriate to defer the search.  However, if it appears unlikely that the earlier priority date can be restored, a search should be conducted.  Examiners should use their judgement to determine the appropriate course of action depending on the facts of the case and consult a senior examiner where necessary.

In the unusual situation where none of the claims are entitled to an earlier priority date, for a standard patent application, an objection should be taken that the application is not entitled to divisional status.  In the case of an innovation patent, examiners should refer the matter to Patent Oppositions.

Although a divisional application may be made only in respect of an invention disclosed in the parent specification(s), there is no requirement that the invention applied for must be excluded from the parent specification. However, the divisional application cannot claim the same invention as the parent specification (see 2.18 Multiple Applications (Sections 64(2) and 101B)).

Note: To determine the date of advertisement of acceptance for a parent application, see 5.10.17 Divisionals.