A focused look at four strategic aspects of Australian divisional practice
Australia’s framework for divisional patent applications offers a considerable amount of flexibility compared to other jurisdictions. That flexibility can be commercially advantageous, but only where the relevant considerations are understood and managed deliberately.
This article examines four procedural and commercial considerations that can materially influence prosecution strategy and overall portfolio expenditure.
1. Timing
Filing a divisional
A divisional application may be filed at any time while the parent application is pending, subject to a statutory time limit triggered by acceptance as discussed below.
If the parent application has been accepted, a divisional may still be filed, but only within three months from the publication of the notice of acceptance. After this three-month period expires, the right to file a divisional from that parent application is lost, even if the patent has not yet been granted.[1]
If the parent application has not yet been accepted, a divisional may be filed at any time before the parent application lapses, is withdrawn, refused, or otherwise ceases to be pending.
A standard application must be accepted within 12 months from the first examination report (subject to limited extensions). If the parent is not accepted within that period it lapses, the ability to file a divisional is lost. Accordingly, where acceptance of the parent is uncertain, it may be prudent to file a divisional before the parent reaches its acceptance deadline to preserve subject matter.
Examination of a divisional
Divisional applications generally receive a direction to request examination shortly after filing, usually within about one month.
Once a direction issues, a request for examination must be filed within two months.
The claims for the divisional application must be filed when filing the request for examination. In practice, this creates an effective window of approximately three months from filing of a divisional application in which the divisional claim scope can be finalised.
Divisional term
A divisional application’s term is tied to the term of the originating Australian application (i.e. the effective filing date). Filing divisional applications does not extend patent term.
2. Cost considerations
Renewal fee timing
Australian renewal fees are not calculated from the divisional filing date, but are based on the filing date of the originating Australian application (i.e. the effective filing date). Renewal fees are also not backdated at the time of filing the divisional.
As a result, where timing permits, filing a divisional shortly after a renewal anniversary of the parent application can avoid incurring that year’s renewal fee for the divisional. In cost-sensitive portfolios, following this timing strategy can materially affect portfolio spend.
Filing costs
A divisional application incurs a fresh official filing fee (AUD 400), a request for examination fee (AUD 550), and an acceptance fee (AUD 300), as per a typical application.[2]
Excess claims fees
Australia imposes excess claims fees where the total number of claims exceeds 20.
The current structure is:[3]
AUD 125 per claim for claims 21–30, and
AUD 250 per claim for claims 31 and above.
Excess claims fees are assessed at multiple stages of prosecution.
Liability for excess claims fees are first assessed when examination is requested. This assessment is based on the number of claims then on file. Then they are also assessed at acceptance, where if the claim count exceeds the number of claims previously paid for, additional excess claims fees for those extra claims are also payable.
Thus, when requesting examination, care should be taken to review and rationalise the claim set in view of these excess claims fees.
3. Claim scope
A divisional may include any claim supported by the parent specification, provided no added matter is introduced. For supported subject matter, the divisional inherits the relevant priority date from the parent.
Australian double patenting doctrine is relatively permissive. Broader and narrower claim sets can often be maintained across related applications without objection in circumstances that might attract scrutiny in other jurisdictions (e.g. the United States). As a result, claims with overlapping scope can generally be pursued across parent and divisional applications without issue, provided they are properly supported by the disclosure.
4. Daisy chaining
Australia permits the filing of a divisional from a divisional, allowing a chain or cascade of pending applications to be maintained across successive generations.
Daisy chaining, as it is known in Australia, can thus be used to preserve pendency where technology is evolving or where claim scope requires staged refinement. Each divisional is examined independently, and there is no formal limit on the number of generations that may be filed, provided statutory timing requirements are met.
However, IP Australia does not examine divisional applications in isolation. The prosecution history of the parent, grandparent and earlier ancestors is visible to the examiner and can materially influence how a divisional is examined.
Additionally, IP Australia has recently introduced a specific supervisory process for families which have an extended daisy chaining of divisional applications. Under the Examiner’s Manual,[4] where a divisional has a great-grandparent (or earlier), and the first examination report on the divisional application raises the same issues as the great-grandparent, it is to be treated as equivalent to an adverse third report.
In practice, this means that the first examination report will be reviewed by a Supervising Examiner, and if the Supervising Examiner considers that no substantive progress has been made across the parent, grandparent and earlier applications, the matter may be case-managed or set down for hearing to achieve prompt resolution.
This is intended to discourage indefinite pendency through repeated divisional filings without meaningful advancement of claim scope.
The implication for applicants is that later-generation divisional applications should not simply recycle previously examined claim strategies. Before filing (or shortly thereafter), it is prudent to review the prosecution history across the family and present claims that demonstrate substantive progression toward acceptance.
Conclusion
Australia’s divisional framework provides considerable flexibility, however timings, cost exposure and prosecution history across the family must be managed deliberately.
If you would like assistance with Australian patent applications or advice on developing a divisional strategy, please get in touch.
[1] Patents Regulations 1991 reg 6A.1(1)(b)(i)) at https://classic.austlii.edu.au/au/legis/cth/consol_reg/pr1991218/s6a.1.html
[2] Patents Regulations 1991 Schedule 7, items 203, 213.
[3] Patents Regulations 1991 Schedule 7, items 203A, 213.
[4] Patent Manual of Practice and Procedure 5.6.10.4 at https://manuals.ipaustralia.gov.au/patent/5.6.10.5-issues-specific-to-the-examination-of-divisional-applications
