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2.19.5 Timing Provisions

Date Published

Examination of an additional application cannot commence unless a request for examination of the parent has been made (sec 81(2)) (see also Examination Practice).

The "main invention" of sec 81(1)(a) is the invention claimed in the complete specification of the application or patent named in the patent request as the parent application or patent. Where the parent application is subsequently divided under sec 79B, examiners are to ensure that the patent request for the patent of addition is amended (where necessary) to identify the parent application in which the main invention is ultimately to be found.

The "date of the patent for the main invention" for the purposes of reg 7.1(2) is the date when the first complete specification disclosing the main invention was filed. A patent of addition cannot be granted when the first disclosure of the main invention occurs after the filing of the application for the patent of addition. Careful consideration of this matter is required when the main invention is described in either an amended patent, or in a divisional application where further information is added.

Grant Requirements

A patent of addition must not be granted before the patent for the main invention is granted (sec 81(3)).  In practice, examiners must not accept an application for a patent of addition until the parent application has been accepted. The procedures stated in 2.19.2 Examination Procedure apply in all cases and in some situations difficulties may arise. However, in certain circumstances the grant of the parent patent may be accelerated and the grant period of the additional patent may be extended (see sec 61(2) and reg 6.2(1)(b)). Cases involving timing complications of this type are to be referred to a supervising examiner.

Additional to an Additional

In the case of applications for a patent of addition to a patent of addition, the “main invention" of the second application for a patent of addition is the invention which is the subject of the first patent of addition (or the application therefor), and not the initial parent patent. Similarly, where there is a longer chain of additionals to additionals, the "main invention" for the purposes of sec 81(2) is that of the immediately preceding application or patent. Thus, additionals to additionals can take place only in chronological order (see also Plural Additional Applications).

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