Divisional Patent Applications FAQs

A divisional patent application is a patent application that has been divided out of an earlier filed ‘parent’ patent application. The divisional application will typically include all of the disclosure of the parent application and retain the earlier date of the parent application.

A divisional application may be filed for a number of reasons including:

• To maintain an application pending when the parent application is not in order for acceptance by the acceptance deadline.
• To cover an additional invention disclosed in the parent application. The parent application may disclose multiple inventions, but may have been limited to one of those inventions during examination. A divisional application can be filed to pursue one or more of the other inventions.
• To pursue broader protection for the same or similar invention. The claims of the parent application may have been limited during examination. A divisional application can be filed in an attempt to pursue broader claims.
• When opposition or litigation by third parties is likely and there is a risk that the parent application or patent may be refused or revoked.
• When third parties are likely to attempt to 'design around' the coverage provided by the claims of the parent application and it is desirable to pursue, or maintain an option to pursue, claims that cover the attempted design around.
• When the invention may change or develop in future so that the claims of the parent application are no longer relevant.

In general, maintaining a pending divisional application, even if a parent application has already been accepted or granted, provides flexibility to pursue protection that may be more robust or be found to be commercially advantageous in the future.

A divisional application can be filed from a parent patent application at any time while the parent application is pending.

When the parent application is accepted after examination, the deadline to file a divisional patent application is 3 months from the date of advertisement of acceptance of the parent application. This is also the deadline to pay acceptance fees for the parent application to grant.

When the parent application fails to proceed to acceptance after examination, e.g., because it has not been possible to overcome one or more examiner objections, any divisional application must be filed before the acceptance deadline expires. The acceptance deadline is 12 months from issuance of the first examination report.

If the parent application has already lapsed before these dates however, e.g. due to intentional non-payment of a renewal fee, it is no longer possible to file a divisional application.

The claims that the applicant wishes to pursue through examination of the divisional application may be submitted at the time of filing the divisional application. Alternatively, ‘placeholder’ claims can be filed. New claims or voluntary claim amendments may then be filed when requesting examination or after issuance of a first examination report, and at any time until acceptance of the divisional application.

Any number of divisional applications can be filed. The parent application may itself be a divisional application and therefore a sequence of divisional applications can be filed, one after the other.

Any claims may be pursued in a divisional application and will retain the date of the parent application as long as they are supported by the disclosure of the parent application as filed.

Double patenting laws in Australia are relatively generous. Patents cannot be granted for the same invention from the same inventor and with the same priority date, but the test for whether claims define the same invention is essentially whether there is redundancy of claiming. If all claims are materially different in some way, no 'double patenting' objection will be raised.

Examination must be requested within two months of the date of a direction to request examination by IP Australia, but no later than five years from the divisional filing date. IP Australia normally issues a direction to request examination very soon after filing a divisional application. We therefore recommend requesting examination at the time of filing a divisional application to reduce the administrative burden and since FB Rice offers a discount on service fees for requesting examination at the same time as filing.

It is important that the following details are up to date at the time of filing the divisional application:

Best method - It is a requirement that the specification discloses ‘the best method known to the applicant of performing the invention’. Australian case law indicates this requirement must be satisfied at the filing date of the relevant application. For a divisional application this is the divisional application filing date. If the best method of performing the invention known to the applicant has changed, FB Rice should be advised as amendment of the divisional specification may be required.

Abstract and title - The abstract and title can be amended at the time of filing a divisional application to better align with any new divisional claims. The title can also be amended during examination if necessary, but it is not possible to amend the abstract after filing.

Inventors - When new claims are filed in divisional applications the named inventors may no longer be correct. FB Rice should be advised if an amendment is required to add or remove inventors.

Incorporation by reference – FB Rice typically includes an incorporation by reference to the parent application (and other related applications) in the description on filing a divisional application.

Filing a divisional application as an innovation patent may be possible. However, this depends on the date that the earliest parent application in the family was filed as Australia is phasing out the innovation patent system. Read more: https://www.fbrice.com.au/ip-news-insights/imminent-phasing-out-of-the-innovation-patent-what-you-need-to-know-and-do