2.10.9 Considering Relative Cases During Examination

In this topic:

General

Examiners must consider the 'parent' file and any other 'relative' files during examination.  By 'relative' file is meant all files linked directly or indirectly as a result of one or more applications being made under the provisions of sec 79B and sec 79C. It includes, for example, 'grandparent' cases and 'cousin' cases.  

Relative Case Under Opposition or Re-Examination, or Contains a Section 27 or Section 28 Notice

If the parent or any 'relative' case is, or has been, under opposition or re-examination, or contains a sec 27 or sec 28 notice, examiners should consider any available material or documentary evidence filed in those proceedings at each report stage. Examiners should also consider any issues raised in the material on the 'relative' file and check whether these apply to the divisional application. The fact that the 'relative' case may be subject to proceedings, e.g. opposition, and those proceedings have not concluded, does not mean that examination or acceptance of the divisional application should be delayed, provided that examiners avoid making comments which prejudge the outcome of the opposition.  In practice this means that examiners should confine their report to the divisional application and should not make direct comments on the proceedings with regard to the ‘relative’ case.  Provided this requirement is met, it is not considered to be prejudging, even in the situation where the claims in the divisional application are the same as those in the ‘relative’ case.

Where the circumstances are such that this condition cannot be met, the case must not be accepted, but instead referred to the Assistant General Manager (OEP).

It is particularly important that examiners consider the potential relevance of any decision which has issued in respect of any 'relative' application.​​​​​​​

Section 32 or Section 36 Request

If an application is subject to a sec 32 or sec 36 request, and the applicant then files a divisional application in respect of the application which is subject to the sec 32 or sec 36 action, there is a risk that, if the requestor is unaware of its existence, a patent could be granted on the divisional. Accordingly, at the first opportunity, examiners are to advise the applicant in an examination report on the divisional application that:

"Prima facie the entitlement of the nominated person has been brought into question because of the section 32/36 action on the parent. Until this dispute is resolved, other examination issues notwithstanding, the Commissioner cannot permit this application to proceed to acceptance."

(See PERP code H6 and also 2.15.7.5 Entitlement Disputes During Examination).