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8.10.2 Priority Entitlement

Date Published

Key Legislation:

Patents Act:

  • s43 Priority dates  
  • 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:

Related Chapters: 

  • Basic Specifications
  • Obtaining and Considering Priority Documents

A divisional application will normally obtain its priority entitlement from the parent application(s) or patent(s) via the provisions of reg 3.12(1)(c) or reg 3.12(1)(d). For an application to proceed as a divisional application under s79B or s79C, at least one claim must be eligible to take the priority date of a parent specification. To obtain the benefit of s79B or s79C, the subject matter claimed in the divisional application must merely be disclosed in the parent.  However, there is no requirement that the subject matter must be identified as being an invention in the parent. Note that any special priority present in the parent (e.g. Convention priority) is, if appropriate, carried through to the divisional application (reg 3.12(1)(c) or reg 3.12(1)(d) and reg 3.12(2)).

A claim of a divisional innovation patent application 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 a patent on the divisional application, and the claim is fairly based on matter disclosed in the parent (s43(6) and reg 3.12(1)(d)).

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 s79B or s79C application and a Convention application. This claim to Convention priority must be stated in the notice of entitlement and derives from reg 3.12(1)(b).  Provided at least one claim is entitled to Convention priority, and at least one claim is entitled to the priority date of the parent, the application may proceed as both a Convention and a divisional. 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.

Note: 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:

a. where third parties request a copy of the document;

b. in examination or re-examination, where there is a citation published after the priority date and before the filing date, or a whole of contents citation with a priority date after the priority date and before the filing date, of the case being examined;

c. in examination or re-examination, where there is a whole of contents citation having a priority date before the priority date of the case being examined; or

d. in opposition, when requested by the opponent.

If either of circumstances b. and c. arises, examiners should follow the procedures outlined in Basic Specifications (where the parent application is a Convention application) or Obtaining and Considering Priority Documents (where the parent application is a PCT application).

Amended Reasons

Amended Reason Date Amended
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