IP Australia, in line with reviews in other jurisdictions, is seeking to address concerns around certainty of patent rights arising from the filing of divisional applications, particularly where divisional applications are filed with
identical or substantially identical claims to those originally filed in the parent application(s).
IP Australia is addressing this problem through changes to 'case management' practice rather than any legislative changes. Effective October 1, 2010, the following practice will be implemented in stages:
• Requests for examination of all divisional applications will be expedited by early issuance of examination directions.
• Where grounds for objection exist, a first adverse examination report will issue in the normal way.
• However, where a ground of objection is substantially identical to a ground previously raised in relation to the parent application and not addressed by substantial amendment or written submissions, the report will, in addition, give notice to the applicant that if no response is filed within two months of the report overcoming the ground of objection, the Commissioner will consider whether to direct amendment of the application or proceed to refuse the application.
• If a response overcoming the objection is not filed within that period, IP Australia will contact the applicant or their attorney and discuss the case before setting the matter for hearing according to established practice. Where the matter is the subject of a hearing, the hearing officer will consider all grounds of objection whether raised previously or not. Where a ground is capable of rectification a reasonable period for the applicant to overcome that ground will be provided. An appeal to the Federal Court of the hearing officer's decision is available under existing legislation.
This last change is expected not to affect divisional applications considered to be in respect of "genuine" different further inventions.
As there have been no legislative changes, the two-month deadline does not override the normal twenty-one month period available for obtaining acceptance of a divisional patent application. However, the new expedited approach to prosecution will force applicants to resolve any outstanding issues more quickly.
The changes will have a number of practical implications for patent applicants. It will be more difficult to delay prosecution by re-filing an application as a divisional application. Further, the strategy of filing divisional applications in order to reserve options in relation to activities of potential infringing competitors will now be severely curtailed - though alternative strategies are available and should be discussed with your patent attorney. On the positive side, applicants wishing to expedite the prosecution of their application may find the filing of a divisional application attractive. Finally, applicants will need to be aware of the potential for a
hearing before IP Australia and the additional costs involved should the objections that are raised during prosecution not be resolved.