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DIVISIONAL PATENT APPLICATIONS

Directions to Request Examination typically now issue within one month or so of filing a divisional application if examination of another family member has previously been requested or directed.

Requests for examination of all divisional applications will be expedited, and will take priority over other applications so that reports will issue quickly once examination is requested. 

An examiner’s report will issue if there are objections.  The normal period of 21 months to place the application into condition for acceptance will apply except in the situation where there is at least one objection based on the same grounds objected to in the examination of the earlier parent patent application, in which case a two month time period will be imposed.

An examination report which raises similar objections as raised in an earlier report for the parent patent application will typically have the following:

“Objections 1 and 2 of my report are based on the same grounds objected to in the examination of patent application 2002xxxxxx. Please note that if a response overcoming those objections is not filed within two months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If intending to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above.”

If a response addressing and overcoming these objections is not filed within the two month time period, the application will be refused.  The applicant’s only option is to request a hearing if they wish to pursue the application. 

This change in practice will particularly affect the situation where an applicant has re-filed an application as a divisional application in order to extend the timeframe for prosecuting the application or use the divisional patent application as a weapon against potential infringers.

Strategy

This is an important change in practice as it will catch both applicants and attorneys out and they will not have the luxury of time to consider possible claim amendments.  Be aware of this time limitation in examination reports.

In view of the change in practice, we recommend filing voluntary amendments at the same time as requesting examination for a divisional application in order to avoid similar objections being raised with the divisional patent application that were raised with the parent patent application. 

By avoiding a shortened deadline from being imposed, the normal 21 month time period should be provided in order to obtain acceptance of the divisional patent application. 

An extension of this strategy is that the claims may remain in an unaccepted stated until closer to the deadline, thereby providing maximum time to consider the scope of possible claims in light of consideration of competitor’s activities and versions of the invention shown to be commercially successful.

If this is relevant to you and you wish to discuss the matter further, please do not hesitate to contact us.