5.6.10.6 Innovation Divisional Applications

Also in this Chapter:

• 5.6.10.1 Requirements to Claim Divisional Status
• 5.6.10.2 Priority Entitlement
• 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

• 5.6.10.7 Annex A - Procedural Outline to Divisional Application Examination

Key Legislation:

Patents Act:

• s79B Divisional applications prior to grant of patent
• s79C Divisional applications for innovation patents may be made after grant of an innovation patent
• s223 Extensions of time​​​​​​​

Related Chapters: 

• 5.6.10 Divisional Applications

On this page

• Overview
• Applicant and Inventors
• Subject Matter
• Statement of Entitlement
• Patent Request
• Priority Entitlement
• Time limits for Filing:
  • ​​​​​​​Divisional Application Filed Prior to Grant of Parent Patent
  • Divisional Application Filed After Grant of Parent Patent
• Status of the Parent (Innovation)
• Lapsing of Parent.

Overview

Innovation applications can be filed as divisional applications from a standard application that was filed before 26 August 2021 or from a granted innovation patent parent.

This section explains the requirements of divisional applications that are specific to innovation patents. The other requirements of divisional applications that are common to both standard and innovation divisional applications can be found in the prior chapters of 5.6.10 Divisional Applications.

Applicant and Inventors

The applicant for the divisional innovation application must be the same as the applicant of the standard parent application or the patentee of the parent innovation patent.

For further Applicant and Inventor requirements, see 5.6.10.1 Requirements to Claim Divisional Status.

Subject Matter

​​​​​​​Every claim in a divisional innovation application must have a priority date before 26 August 2021. That is, every claim 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, and the parent must have been filed before 26​​​​​​​ August 2021.

Statement of Entitlement

A correct Statement of Entitlement is required to maintain divisional status. It is the responsibility of CEG to check this, and object if appropriate, at filing. Where the applicant of the divisional application is the same as the applicant of the parent application, or the patentee of the parent patent, the applicant does not need to state their entitlement to make the divisional application.  

Where this is not the case, the applicant must state that the person nominated for the grant of the patent is entitled to make a request under s113 in relation to the parent application. A statement provided with the request for examination will suffice and must be filed for the application to proceed as a divisional application.

Patent Request

The patent request must indicate that the innovation application is a divisional application under s79B or s79C and state the number of the parent application/patent.  

CEG will check that these requirements have been met at filing. However, where examiners become aware of any issues during examination (for example, the parent application number is incorrect) these should be raised in the report.

Where a request does not invoke s79B or s79C, but there is evidence on file to suggest that the applicant intended to invoke the provision (for example, the applicant indicates that the application is a divisional in an accompanying letter), the application should be treated as a divisional application and an objection taken to the request.

Priority Entitlement

Claims of a divisional innovation application made from a granted innovation patent (filed under s79C) will only be entitled to obtain priority from the parent if examination of the divisional patent is requested within 2 months of the date of grant of the divisional patent and the parent contains a clear enough and complete enough disclosure of the claimed invention.

In the unusual situation where none of the claims are entitled to an earlier priority date, examiners should refer the matter to Oppositions.

Time limits for Filing

Divisional Application Filed Prior to Grant of Parent Patent

Prior to grant of the parent patent, the time limits for filing a divisional innovation application are the same as for filing a divisional standard application. Therefore, see 5.6.10.3 Time Limits for Filing​​​​​​​​​​​​​​.

Divisional Application Filed After Grant of Parent Patent

After grant of an innovation patent, the patentee can file a divisional application for another innovation patent provided that the parent application was filed or otherwise has a date of patent before 26 August 2021. However, the divisional application must be filed during the period that commences on the date that examination of the parent begins and finishes 1 month after the date of advertisement of certification of the parent patent (also referred to as the date of publication of a notice of the occurrence of examination) but is subject to the status of the parent.

In this context, the divisional application must be for a different invention disclosed in the parent. The purpose of this requirement is to allow patentees to file divisional applications for further inventions during examination of the parent (or shortly thereafter), for example, when lack of unity issues arise or more than one invention is disclosed but not claimed. It is not intended to provide a general post-grant divisional mechanism.

Status of the Parent (Innovation) 

The parent application/patent must be in force at the time of filing the divisional. Thus, a divisional application cannot be made:

• where the parent application has lapsed, been refused or withdrawn; or
• 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, 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.

Examiners should also check whether the time limits for filing a divisional application have been met.

Lapsing of Parent

If the parent application of a divisional application is in a state of lapse due to the non-payment of continuation fees and the continuation fee is subsequently paid, the divisional application can proceed. 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 s223.

Note that in certain situations, the invoking of s79B or s79C does not need to occur before the 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 5.6.10.5 Issues specific to the Examination of Divisional Applications).

Information for when the parent is a PCT application and when the parent is an application for a patent of addition is the same for standard and innovation divisional applications (see 5.6.10.4 Status of the Parent).