5.6.10.2 Priority Entitlement

Also in this Chapter:

• 5.6.10.1 Requirements to Claim Divisional Status​​​​​​​
• 5.6.10.3 Time Limits for Filing
• 5.6.10.4 Status of the Parent
• 5.6.10.5 Issues specific to the Examination of divisional applications
• 5.6.10.6 Innovation Divisional Applications
• 5.6.10.7 Annex A - Procedural Outline to Divisional Application Examination

​​​​​​​Related Chapters:

• 5.6.2.6 Obtaining priority documents
• 5.6.2.9 Convention applications - Basic Applications, ​​​​​​​

On this page

• Overview
• Priority Entitlement Where the Divisional Application is Also a Convention Application
• Copy of Priority Document.

Overview

Any claim of a divisional application will be entitled to obtain priority from the parent if the invention it defines 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.

Any claim of the divisional which is not disclosed in a clear enough and complete enough manner in the parent will not be entitled to obtain priority from the parent. In this situation, the parent specification may be a potential citation.

Where a claim is not entitled to an earlier priority date, examiners will need to consider if a search of the claim is warranted. The search should usually cover the period extending from the priority date of the parent to the filing date of the divisional, however a search of a greater time range may be required.

It may be appropriate to contact the attorney to inform them that some claims are not entitled to the earlier priority date, and as such a search will need to be conducted.

In the unusual situation where none of the claims are entitled to an earlier priority date, an objection should be taken that the application is not entitled to divisional status.

For information on priority entitlement of divisional innovation applications, see Priority Entitlement Where the Divisional Application is Also a Convention Application. 

Priority Entitlement Where the Divisional Application is Also a Convention Application 

A divisional application may claim Convention priority from a basic application that is not referred to in the parent case. In this situation, the divisional application can proceed as both a divisional application and a Convention application, provided at least one claim is entitled to Convention priority, and at least one claim is entitled to the priority date of the parent. This claim to Convention priority must be stated in the notice of entitlement. It is also possible for the same claim to give Convention and divisional status to the divisional application, either because the claim includes distinct alternative embodiments, or because the divisional application was filed within 12 months from the date of filing of the basic application for the parent.

Similar considerations apply to a divisional application that claims priority from an associated provisional application.

Copy of Priority Document

During examination, it is not necessary for a copy of the priority document for the parent application to be on file, except under the following circumstances:

• where third parties request a copy of the document;
• in examination or re-examination, where there is a whole of contents citation with a priority date after the priority date and before the filing date, of the case being examined;
• in examination or re-examination, where there is a whole of contents citation (P or E doc); or
• in opposition, when requested by the opponent.

If either of the second or third circumstances arise, examiners should follow the procedures outlined in 5.6.2.9 Convention applications - Basic Applications (where the parent application is a Convention application) or 5.6.2.6 Obtaining priority documents (where the parent application is a PCT application).