5.6.9.11 Parallel Applications (Applications for both innovation and standard)

Also in this Chapter:

• 5.6.9.1 Conditions and Time for Acceptance
• 5.6.9.2 Postponement of Acceptance
• 5.6.9.3 Extension of Acceptance Period
• 5.6.9.4 Revocation of acceptance
• 5.6.9.5 Refusal of acceptance - Specific circumstances
• 5.6.9.6 Refusal of an Application;
• 5.6.9.7 Continued Examination - Result of a decision
• 5.6.9.8 Lapsing of an application
• 5.6.9.9 Withdrawal of an application
• 5.6.9.10 Double patenting, Multiple Applications - s62(2), s101B(2)(h)
• 5.6.9.12 Register of Patents
• 5.6.9.13 Annex A - Example Bar-to-Grant Letter (Accepted Despite Multiple Inventions)

• 5.6.9.14 Acceptance and QRS Issues

Key Legislation:

Patents Act:

• s64(2) Grant: multiple applications
• s79B Divisional applications prior to grant of patent  
• s79C Divisional applications for innovation patents may be made after grant of an innovation patent

Patents Regulations:

• reg 3.18(2)(e) patent cannot be granted on the application because of s64(2) of the Act

Related Chapters:​​​​​​​

• 5.5.4 Claim construction and claim types
• 5.5.4.3 Omnibus claims
• 5.6.5.2 Whole of Contents​​​​​​​

Co-existing Innovation and Standard Patents    

​​​​​​​"Parallel applications" or "parallel protection" refers to the practice of having both a standard patent application and an innovation patent application in respect of the same subject matter proceeding at the same time. The two applications may be linked together utilising the provisions of s79B and s79C, or they may be quite independent applications. The rationale behind parallel protection is to take advantage of the shorter time taken to grant an innovation patent, as well as the longer term and the absence of a statutory limit on the number of claims applying to a standard patent.

Applications involving parallel protection are subject to the usual provisions of the Act. However, examiners should also be aware of:

• 'whole of contents' considerations, if the respective priority dates are different; and
• multiple applications (s64(2) Double patenting) considerations, if the respective priority dates are the same.

Office practice in relation to "parallel protection" applications is to treat each application on its own merits and in the usual manner. Thus, there is no need to delay examination of the innovation patent in anticipation of an examination request of the standard application. However, if an examination request has been filed such that processing of both applications can occur simultaneously, then it may be more efficient to examine both applications together.

A cross-reference should be placed on both case files as soon as the examiner is aware of the co-existence of the application for a standard patent and innovation patent.​​​​​​​