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Australian Patent Office Case Management of Divisional Applications in Practice

Date: 02 February 2011
Author: Patrick McManamny
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Background

Historically, an Australian divisional application could be filed to extend prosecution of claims that were not accepted in the parent application.  The Australian Patent Office (“the Office") has implemented a new practice designed to limit the use of divisional applications to extend the period for having claims examined and accepted.  The Office believes that it is in the public interest to resolve patentability of claims in a limited timeframe and that the new practice will achieve this end. 

The New Practice

Under the new practice, if an Examiner objects to the claims of a divisional application for the "same or substantially the same reason" as an objection raised against an ancestor application, a two month deadline will be set to overcome that objection(s). 

The shortened deadline does not appear to be applied to objections newly raised in the divisional application, meaning that there may be different deadlines for overcoming different objections raised in the same report.  In our experience to date, the Examiner clearly indicates which objection(s) must be overcome within the two month timeframe.  

Procedure For Responding

There are three possible avenues for responding to an objection that has previously been raised against an ancestor application:
  •  Overcoming the relevant objections.  We understand that if an applicant files a response overcoming the relevant objections within the two month period, the application will proceed through normal examination for any new objections or proceed to acceptance.  Thus, in theory the applicant will still have 21 months from the date of the first report to overcome any objections which had not been raised against an ancestor application.
  • Responding to the objections and progressing examination.  If the applicant responds and "progresses examination" but does not overcome the objection(s), the Office’s Manual of Practice and Procedure indicates that it may elect to allow examination to continue to a further report before setting the matter for a Hearing.  This appears to be discretionary under the new practice.  Our understanding of how the issue of “progressing examination” will be decided in practice is primarily based on whether the applicant presents new arguments (i.e., not presented in the ancestor application) and/or introduces an amendment that goes some way to addressing the objection(s).  We have received an indication that the two month deadline is unlikely to apply to the further report, with the standard requirement for gaining acceptance within 21 months of issuance of the first report likely to be applied.  However, since the Office’s practice is still relatively untested, it is unclear if this will always be the case.
  • Not responding or filing a response that does not progress examination.  If a response  that progresses examination is not filed, our experience is that the application will most likely be referred for a Hearing.  The Office will allow a very short period (two weeks) to make written submissions before the Hearing, which will be based on those submissions.  Under the Office’s guidelines, the Hearing Officer will consider all issues of patentability whether raised previously or not.  Accordingly, the Hearing Officer can consider objections to claims not subject to the two month deadline and issues not previously raised in an Examiner’s Report.  At this stage, it is unclear if, in practice, the Hearing Office will limit his/her considerations to only those issues raised in the Examiner’s Report.  Allegedly, where there is a ground that can be readily resolved, the Hearing Officer will give the applicant a reasonable time to overcome that ground.  However, the Hearing Officer may refuse the application outright. 

Recommendations

Given the very short timeframes set by the Office for dealing with issues under its new practice, we recommend the following:
  • Consider presenting new claims at the time of, or before, requesting examination of a divisional application to avoid the new practice of the Office.
  • If you plan to pursue claims which were objected to in an earlier filing we suggest submitting arguments against the previous objections when requesting examination.  This may avoid the two month deadline being set.
  • Review your portfolio to identify applications that may be subject to the Office’s new practice and consider entering a preliminary amendment to the claims.
  • If you receive an Examiner’s report setting a two month deadline to overcome an objection, seriously consider filing a response presenting new arguments and/or amendments.  Also consider addressing all issues raised in the Examiner’s report, since if you are summoned to a Hearing, the Hearing Office may consider those issues.
  • If you wish to proceed to a Hearing, consider all issues of patentability, since the Hearing Officer is not limited to considering only those issues raised in the Examiner’s Report.  However, you should consider whether you wish to place any arguments on the record in relation to potential objection that have not actually been raised in an Examiner’s Report.
  • Discuss with your patent attorney alternative strategies for delaying prosecution and/or maintaining flexibility on your portfolio in relation to activities of potential infringing competitors.
 
If you have any questions or require any assistance in relation to this topic, please email Patrick McManamny.

 
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