Patent divisional practice in South East Asia

What is a divisional patent application?

Article 4 G of the Paris Convention for the Protection of Industrial Property provides the basis upon which an applicant may pursue division of an application.

Paragraph (1) of Article 4 G provides an applicant with the right to divide an application into one or more divisional applications where examination reveals multiple inventions. This allows an applicant to pursue patent protection for each such invention, the subject of each divisional application and retain the priority rights of each application.

Paragraph (2) of Article 4 G also provides an applicant with a voluntary right to divide an application into one or more divisional applications. However, the conditions under which this right is authorised is allowed to be determined by each country.

Paragraph (2) underpins global variation

Owing to paragraph (2) allowing a country to establish “conditions”, there is a substantial global variation in the rules and procedures governing the filing and prosecution of divisional patent applications. These include practical matters such as timing, claim scope and availability to continue prosecution. Having a good understanding of requirements is necessary when formulating filing and prosecution strategies.

The importance of South East Asia

South East Asia is a region which continues to experience remarkable growth. Consequently, the pursuit of patent rights in this region is assuming greater importance in a global context.

For this reason, in this article we focus on key practices and procedures in a number of representative countries in the South East Asian region—Australia, Indonesia, Malaysia, New Zealand, The Philippines, Singapore, Thailand, and Vietnam. It is important to note the possibility of a particular fact scenario being outside the scope of this article. Therefore in devising prosecution strategies, attorneys should carefully consider the general guidance provided in this article.

When may a divisional application be filed?

Country	Timing Requirements
Australia	Voluntary or lack of unity: on or before three months from allowance of parent or refusal of parent.
Indonesia	Voluntary or lack of unity: before grant or rejection of parent.
Malaysia	Voluntary or lack of unity: within three months of first office action or a lack of unity objection.
New Zealand	Voluntary or lack of unity: prior to allowance whilst a parent application is pending. All divisionals must be filed with examination requested within five years of the first non-provisional filing.
The Philippines	Lack of unity: within four months of direction to divide, or before grant, withdrawal or abandonment of parent.
Singapore	Voluntary or lack of unity: within two months from allowance.
Thailand	Lack of unity: within 120 days of lack of unity decision.
Vietnam	Voluntary or lack of unity: prior to allowance of parent.

Can a divisional application be used to continue prosecution and are divisional of divisionals permitted?

Country	Continue prosecution?	Divisional of divisional?
Australia	Yes	Yes
Indonesia	Yes	Yes
Malaysia	Yes	Yes
New Zealand	Yes	Yes
The Philippines	No	No
Singapore	Yes	Yes
Thailand	Yes	Yes
Vietnam	Yes	Yes

Double patenting - allowable claims

Country	Divisional claim scope
Australia	Non-identical claims allowed including overlapping, broader or narrower claims.
Indonesia	Only non-overlapping claims (lacking unity) allowed. A divisional cannot be used to broaden around a parent claim position.
Malaysia	Non-identical overlapping or non-overlapping claims allowed.
New Zealand	Generally, only non-overlapping claims allowed. Non-identical overlapping claims may be allowed to a different invention as claimed from its parent.
The Philippines	Non-identical overlapping or non-overlapping claims allowed.
Singapore	Non-identical overlapping or non-overlapping claims allowed, but to a different invention as claimed from its parent.
Thailand	Generally, only non-overlapping (lacking unity) claims allowed. Overlapping claims may be allowed if based on a corresponding foreign patent submitted for the purpose of substantive examination.
Vietnam	Generally, only non-overlapping claims (lacking unity) allowed. A divisional cannot be used to broaden around a parent claim position.

Double patenting - validity

Country	Examined?	Ground for revocation?
Australia	Yes	No
Indonesia	Yes	No
Malaysia	Yes	No
New Zealand	Yes	No
The Philippines	Yes	No
Singapore	Yes	Yes
Thailand	Yes	No
Vietnam	Yes	Yes

Conclusion

It is evident that the manner in which divisional applications are treated in this region varies substantially. Consequently, in devising and executing patenting strategies it is critically important to be aware of the requirements and restrictions of each country.