The Australian Patent Office (IP Australia) recently implemented changes to its examination procedures for divisional applications that are designed to promote "prompt resolution" of their status, "particularly where the claimed subject matter of the divisional application is the same as its parent." While resolving uncertainty is an important goal, the new procedures add a new layer of complexity that may hit non-Australian applicants particularly hard.
New Case Management Procedures For Divisional Applications
IP Australia recently has expedited Requests for Examination of divisional applications, and has instructed examiners to give special consideration to divisional applications, including coordinating examination of co-pending divisional applications and reviewing the parent application(s) for any adverse examination reports.
Most notably, if a divisional application is rejected "for the same or substantially the same reason" as a parent application, the applicant is given only two months to respond. This is drastically shorter than the 21 month response period that usually applies. Indeed, if an examination report raises both "old" and "new" rejections, the applicant may face two deadlines: the short, 2 month deadline for overcoming rejections that also were raised in a parent application and the usual 21 month deadline for addressing any new rejections.
The consequences for missing the 2 month deadline may be severe, including refusal of the application (subject to a hearing).
Even when a response is timely filed, examiners are instructed to "make a decision as to whether or not the response is a serious attempt to meet the objections raised in the first report." If not, examiners are instructed to consult with supervisors who are to "determine an appropriate course of action."
If a response makes "significant progress towards gaining acceptance" but does not overcome all rejections, the examiner will issue a further examination report with a normal response period.
New Strategies For The New Procedures
Applicants who file divisional applications in Australia should be prepared for examination to commence quickly, and should be ready to address any issues that were raised in the parent application(s). If the rejections were overcome in the parent application, it may be enough to have the same arguments at the ready. If the claims were amended in the parent, applicants may want to consider in advance their strategies for the divisional, such as additional arguments or evidence and/or similar or different claim amendments.
Practitioners need to be aware that short response periods may arise in Australian divisional applications, and keep in mind the time required for communications between IP Australia, the Australian patent attorney, the U.S. patent attorney, and the applicant.
It is interesting to see the different approaches different countries have taken to address the "problem" of divisional applications. The USPTO's efforts to limit continuation and divisional application filings by the 2007 Claims And Continuation Rules were determined to be contrary to U.S. patent laws, but the European Patent Office was able to implement a 2-year time limit for filing divisional applications, and now IP Australia is taking steps to expedite examination of divisional applications to more quickly resolve the scope of the patent rights stemming from the original application.