5.6.11.6 Annex A - Procedural Outline to Patents of Addition Examination

1.

Consider all ‘relative’ case files (Registry Manager to supply paper case files).

5.6.11.4 Issues specific to the Examination of additional applications (Parent Case Under Opposition or Re-Examination, or Contains a Section 27 Notice)

Neither the parent nor the patent of addition can be an innovation patent.

5.6.11.1 Conditions for filing (Overview)

2.

Check application in force if the date of the patent is more than 4 years ago (usually this will only arise in the case of divisional applications).

5.6.11.1 Conditions for filing (Parent Must be in Force)

3.

Check that the parent is in force at each stage of examination of the patent of addition. The patent of addition is in force provided the parent is in force.

5.6.11.1 Conditions for filing (Parent Must be in Force)

4.

Check that the request for examination of the parent has been filed before commencing examination of the patent of addition.

5.6.11.1 Conditions for filing (Timing Provisions)

5.

Check that the patent of addition was filed on or after the filing of the parent application.

5.6.11.1 Conditions for filing (Timing Provisions)

6.

Check that the patent request indicates the parent application or patent number.

5.6.11.1 Conditions for filing (Overview)

Check that the applicant for the patent of addition is the same as the applicant or patentee for the parent or has the consent of the parent applicant or patentee.

5.6.11.1 Conditions for filing

7.

Check that the patent of addition is in respect of an improvement in, or modification of, the main invention.

5.6.11.2 Improvement or Modification

8.

Check that the patent of addition is in respect of only one improvement in, or modification of, the main invention.

5.6.11.2 Improvement or Modification

Check that there is no claim in the patent of addition which is identical in scope to a claim in the parent.

5.6.9.10 Double patenting, Multiple Applications - s.64(2), 101B(2)(h) (Additionals/Divisionals)

5.6.11.3 Differentiation from the parent

9.

Consider novelty implications if the parent was published prior to the priority date of the claims of the patent of addition.

The patent of addition does not need to involve an inventive step in view of the parent.

5.6.11.3 Differentiation from the parent

10.

Check all 'relative' case file(s) for any relevant material filed in relation to sec 32 or sec 36 requests, opposition, re-examination or notices under sec 27 or sec 28 which may give rise to an objection on the patent of addition.

5.6.11.4 Issues specific to the Examination of additional applications (Parent Case Under Opposition or Re-Examination, or Contains a Section 27 Notice)

11.

Check that the parent has been accepted or is already a patent before accepting the patent of addition.

5.6.11 Conditions for Filing (Grant Requirements)

12.

Where the case is supervised, submit all paper ancestor case file(s) with the patent of addition case file.

5.6.11.4 Issues specific to the Examination of additional applications (Parent Case Under Opposition or Re-Examination, or Contains a Section 27 Notice)