Changes to divisional applications deadlines in Australia – is there a need for precautionary filings?

Recent legislative changes introduced in Australia from 15 April 2013 by the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 have changed the deadlines for filing divisional applications.

Previously, a divisional application could be filed at any time up until grant of the parent application (although the claims of a divisional application lodged three months after advertised acceptance of the parent were required to fall within the scope of the accepted claims of the parent). This allowed the applicant of an opposed application to file a divisional application at any time during opposition proceedings – providing a safeguard in case the opposition was successful.

Additionally, it was previously possible to convert a standard patent application into a divisional application so long as the application to be converted could have been filed as a divisional of the nominated parent on its original filing date. This resulted in a situation where an application could be converted into a divisional after grant of the parent.

The changes to Section 79B of the Patents Act 1990 and Regulation 6A.1 of the Patents Regulations 1991 restrict:

  • the time of filing of divisionals to within three months of acceptance of the parent; and
  • the conversion of an application into a divisional to within three months of acceptance of the parent or no later than acceptance of the divisional.

As the deadline for filing a divisional application now coincides with the deadline for lodging a Notice of Opposition, divisional applications can no longer be filed or converted during opposition proceedings. Accordingly, should applicants have any reason to suspect that their patent application may be opposed, it is highly recommended that a precautionary divisional application be filed within three months of advertised acceptance.

The changes for divisional applications only relate to deadlines. The scope of the claims of a divisional application may still overlap with that of the parent. Further, in relation to pharmaceutical patents, an extension of term can still be obtained for both a parent and its divisional child based on a single registration of a product on the Australian Register of Therapeutic Goods.