8.10.1 Application

Also in this Chapter:

• 8.10.2 Priority Entitlement

• 8.10.3 Time Limits for Filing Applications

• 8.10.4 Subject Matter

• 8.10.5 Amendment of Patent Request - Conversion of Application to a Divisional

• 8.10.6 Case Management of Divisional Applications

Key Legislation:

Patents Act:

• s38 Time for making complete application
• s79B Divisional applications prior to grant of patent  
• s79C Divisional applications for innovation patents may be made after grant of an innovation patent  
• s113 Persons claiming under assignment or agreement  

Related Chapters: 

• 2.10.2 Priority Entitlement
• 2.10.3 Time Limits for Filing Applications
• 2.10.4 Status of Parent
• 2.6.4.2 Section 113 Amendments (Assignment, Agreement or Operation of Law)

On this page

• General
• Applicant and Inventors
• Statement of Entitlement
• Patent Request

General

A divisional application is a further complete application made from a "parent" application, or a "parent" innovation patent, under the provisions of s79B or s79C.

The parent application:

• can be an application for a standard patent or an innovation patent.
• may itself be a divisional application.
• may be a PCT application.
• cannot be a provisional application.

It is also possible for a single divisional application to be made in respect of two or more different parent applications.

Further information on the requirements for filing a divisional application and priority date considerations is provided in:

• 2.10.2 Priority Entitlement;
• 2.10.3 Time Limits for Filing Applications; and
• 2.10.4 Status of Parent.

Applicant and Inventors

The applicant for the divisional application must be the same as the applicant of the parent application, or the patentee of the parent patent. However, examiners should note that s79B defines an "applicant" as having the same meaning as s38.  Therefore, an applicant includes a person entitled to make a request under s113. If the applicants are different, there should be a clear entitlement under s113. This does not require that an actual request under s113 is made, but rather that the evidentiary requirements to warrant a s113 direction are met (see 2.6.4.2 Section 113 Amendments (Assignment, Agreement or Operation of Law)). Otherwise, an objection to the difference in applicants must be taken.

Where a parent application has joint applicants, all co-applicants need to apply for the divisional application. The one exception is where a co-applicant can provide evidence of an assignment of the other co-applicant's part interest in the parent application.

In principle, it is possible for an invention which is the subject of a divisional application to have different inventors to those associated with the invention which is the subject of the parent application. This applies even where the specifications of the parent and divisional are the same. Examiners should therefore assume that any information provided in this regard is correct.  

Statement of Entitlement

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.  In this regard, a statement provided with the request for examination will suffice.

A statement, where required, must be filed in order for the application to proceed as a divisional application.

Patent Request

The patent request must invoke the provisions of s79B or s79C by stating the number of the parent application/patent.

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 (e.g. the applicant indicates in an accompanying letter that the application is a divisional), the application should be treated as a divisional application and an objection taken to the request.