IP australia (the “Office”) has now begun implementing recently announced changes to patent examination practice relating to divisional applications. at least five patent applications have been refused by the Office for failure to comply with the new practice. It is now clear that the Office intends to swiftly refuse divisional applications where:
- they present claim(s) identical or similar to those of a parent application that is the subject of an unresolved examination issue, and
- the unresolved examination issue is not addressed within the shortened response period set by a first examination report. Further detail on how this practice change is now being implemented by the Office is discussed below.
As reported in our IP update, December 2010 Issue, the Office announced in October 2010 a new “case management” approach for examination of divisional applications. The new approach has been adopted primarily to expedite examination of divisional applications claiming the same or similar subject matter that has previously been the subject of an objection raised in a corresponding parent application.
Prior to the new practice change, when a first examination report issued on a divisional application the applicant would be afforded 21 months to address all objections raised by an examiner and place the application in order for acceptance. however, the Office was concerned that by the repeated filing of new divisional applications at the end of the 21 month acceptance period it was possible and relatively easy to keep a pending divisional application throughout the entire term of a parent patent. The Office was of the view that such misuse of the patent system was prejudicial to the public interest as the scope of patent rights could remain unresolved for an undue period.
Under the new examination practice, any claimed subject matter that is the same or similar to that which has previously been examined in an earlier related case and is the subject of an unresolved examination issue will be identified in a first examination report as having a shortened response period of two months from the date of issuance of the report. A standard acceptance period of 21 months from the date of issuance of the report will apply to any other objections raised by the examiner. Accordingly, under the new examination practice a first examination report that issues on a divisional application may present objections having a shortened response period of two months and also objections having the standard acceptance period of 21 months.
Assuming a response to such an examination report is made within the shortened two month response period and it addresses the objection(s) that in effect is outstanding from an earlier corresponding case, prosecution of the divisional application will revert back to the standard 21 month acceptance period for resolution of all remaining objections.
However, if no response is filed within the shortened two month response period, or if the response is deemed not to be substantive, then the Office will issue a further official letter setting the matter down for hearing and also stipulating that the applicant will have one further month from the date of issuance of the official letter in which to either (a) file a substantive response to address the relevant objection(s), or (b) make a submission that will be considered at the hearing. If a response is filed during this one month period that adequately addresses the relevant objection(s), then the case will revert to the standard 21 month acceptance period for resolution of any remaining objections. however, if no response is filed within the one month period, or if a response filed is deemed not to be substantive, then it is likely a decision refusing the application will issue shortly after the expiration of the one month period.
The Office initially began implementing the new practice change by issuing the further official letter with a two week response period, but it has now revised this response period to one month.
Although the applicant will have an opportunity to appeal refusal of the application on either administrative or substantive grounds, it appears that unless the refusal is overturned on appeal it will be effective from the date of the refusal decision. In that case, the date of the decision to refuse will be the final deadline by which a further divisional application can validly be filed.
As mentioned, this practice change has been introduced primarily to expedite the prosecution of divisional applications where a ground(s) for refusing the application has previously been considered by an examiner in an earlier corresponding application. however, in implementing these changes the Office wishes to avoid the need for a significant number of potentially unnecessary hearings. Accordingly, although matters may technically be set down for hearing, no actual hearing will take place unless an applicant specifically requests that an oral hearing is to be conducted. In the absence of such a request, the Office will simply consider the case based upon its history and any submissions received.
Where the applicant fails to provide any submissions, the Office will most likely issue a decision refusing the application. refusal of the application will occur on a date shortly after expiry of the one month period set by the further official letter. Where an applicant files a formal request for an oral hearing, a date for consideration of the application will be set and the hearing date would constitute the final day on which a further divisional application could validly be filed.
We again remind practitioners and applicants alike that under the new practice of examining divisional applications a first examination report may now issue with a shortened response period of only two months. every effort should be made to file a substantive response to such a report either in the two month period set from the date of the report, or at the very least within the one month period provided by the further official letter setting the matter down for hearing. If no action is taken within either of these response periods, it is highly likely that the application will be refused and the opportunity to file a further divisional application to maintain pendency of an application may be lost.