Who gets a hearing? Implementation of the “two-month deadline” for Australian divisional applications

The Australian Patent Office has been progressively implementing measures to expedite examination of divisional applications. Directions to request examination now issue within two months of filing and official reports issue within two months of examination being requested (compared to 24 months and 14 months, respectively, for non-divisional standard patent applications).

 

The Patent Office has recently introduced case management procedures that expedite examination of divisional applications further. When an objection is raised against a divisional application that was previously raised in relation to the parent application, the applicant now has two months in which to overcome the objection. Otherwise, following a hearing, the Commissioner may direct amendment of the application under section 107 or refuse the application under section 49(2) of the Patents Act.

When these new patent office rules came into effect in February 2011, it was somewhat unclear as to how they would be implemented by examiners. Some guidance is provided in the Patent Office Manual of Practice and Procedure:

(a) if a response is not received by the two-month deadline, the Patent Office will set the matter for a hearing;

(b) if a response is received by the two-month deadline that overcomes the objection, examination will continue as normal and the applicant will have 21 months from the date of issuance of the first official report to place the application in order for acceptance; or

(c) if a response is received by the two-month deadline that makes some progress but does not completely overcome the objection, the Patent Office may elect to allow examination to continue to a further report before setting the matter for a hearing.

It is our experience that, provided the applicant acts in good faith and makes a genuine attempt to address the objection, the matter is unlikely to be set for a hearing – rather, should the examiner maintain the objection, it is likely that a further official report will issue and a new deadline will be set. We have been informally advised that if an examiner believes a submission does not “seriously” attempt to address the objection, an alternative to setting down a hearing is to issue a shortened deadline for responding to the official report.

Should a hearing notice issue, the applicant will have one month in which to file a submission. If amendments are made that overcome the objection, the Commissioner will not proceed with the hearing. However, if no submission is received or the amendments do not fully overcome the objection, the matter will be passed to a hearing officer to issue a written decision. As discussed above, the Commissioner may refuse the application or direct amendment.

Since implementation of the new rules, all 26 hearings to date have been for cases in which a response was not lodged by the two-month deadline. In all cases, submissions were not made in response to the hearing notice and the applications were refused.

To ensure the broadest possible disclosure is included in the specification, divisional applications are commonly lodged in the same form in which the parent application was filed. Hence the claims of a divisional application will often be identical to those of the parent. Once a direction to request examination issues for the divisional application (as discussed above, this usually occurs two months after the application is filed), the applicant has six months to comply. We recommend that the claims of the divisional application be amended when requesting examination. This will avoid triggering the two-month deadline for responding to the first Examiner’s Report – thereby conserving the costs associated with forwarding the Report and preparing a formal response.