8.10.4 Subject Matter

Also in this Chapter:

• 8.10.1 Application

• 8.10.2 Priority Entitlement

• 8.10.3 Time Limits for Filing Applications​​​​​​​

• 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:

• s64 Grant: multiple applications
• s79B Divisional applications prior to grant of patent
• s79C Divisional applications for innovation patent may be made after grant of an innovation patent
• s101B Examination of an innovation patent  

Related Chapters: 

• 2.12.1.1 Priority Date of Claims
• 2.12.1.1A Priority Date of Claims
• 2.18 Multiple Applications (Sections 64(2) and 101B)
• ​​​​​​​5.10.17 Divisionals

On this page

• General
• Divisional Application Filed Outside Three Month Advertisement Period
• Other

General

Sections 79B and 79C place certain limitations upon the subject matter which can be claimed in a divisional application.

A divisional application may include and claim matter which was not disclosed in the parent where it is filed:

• before acceptance of a parent application; or
• within 3 months from the date of advertisement of acceptance of a parent application for a standard patent (also referred to as the date of publication of a notice of acceptance of a parent application).

Note: To determine the date of advertisement of acceptance for a parent application, see 5.10.17 Divisionals.

However, in order to derive priority from the parent (and be entitled to divisional status), certain requirements must be met.

1. Where the divisional application is:

• a standard patent application/innovation patent with an examination request filed before 15 April 2013; or
• an innovation patent where the Commissioner decided before 15 April 2013 to examine the patent;

at least one claim of the divisional application must be fairly based on matter disclosed in the parent (see 2.12.1.1 Priority Date of Claims). Any claim of the divisional which is not fairly based on matter disclosed in the parent is not objectionable for this reason alone, but may lack novelty or an inventive/innovative step due to its non-entitlement to an earlier priority date.*  Examiners should note that in this situation the parent specification may be a potential citation.

2. Where the divisional application is:

• a standard patent application/innovation patent with an examination request filed on or after 15 April 2013; or
• an innovation patent where the Commissioner had not decided before 15 April 2013 to examine the patent;

at least one claim of the divisional application 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 (see 2.12.1.1A Priority Date of Claims).  Any claim of the divisional which is not disclosed in a clear enough and complete enough manner in the parent is not objectionable for this reason alone, but may lack novelty or an inventive/innovative step due to its non-entitlement to an earlier priority date.*  Examiners should note that in this situation the parent specification may be a potential citation.

*Note: Where a claim is not entitled to an earlier priority date, examiners will need to consider whether a search of the claim is warranted.  In general, the search should cover the period extending from the priority date of the parent to the filing date of the divisional.  However, there may be circumstances where a search of a greater time period is required.

Where it appears likely that the earlier priority date can be restored, for example by a straightforward amendment to the claim, it may be more appropriate to defer the search.  However, if it appears unlikely that the earlier priority date can be restored, a search should be conducted.  Examiners should use their judgement to determine the appropriate course of action depending on the facts of the case and consult a senior examiner where necessary.

In the unusual situation where none of the claims are entitled to an earlier priority date, for a standard patent application, an objection should be taken that the application is not entitled to divisional status.  In the case of an innovation patent, examiners should refer the matter to Patent Oppositions.

Divisional Application Filed Outside Three Month Advertisement Period

A divisional application which is filed more than 3 months after the date of advertisement of acceptance of a parent application for a standard patent must be for an invention falling within the scope of the claims of the accepted parent specification. This limitation applies to all the claims of the divisional application. Where this requirement is not met, examiners must include an objection to this effect in their report.

Similarly, where amendments to a divisional application are filed in anticipation and include claims broader in scope than the accepted claims of the parent, the report must include an objection that the claims of the divisional application must fall within the scope of the claims of the accepted parent.

Other

Although a divisional application may be made only in respect of an invention disclosed in the parent specification(s), there is no requirement that the invention applied for must be excluded from the parent specification. However, the divisional application cannot claim the same invention as the parent specification (see 2.18 Multiple Applications (Sections 64(2) and 101B)).