Divisional Practice: Australia and New Zealand

Continuing on with my article in relation to the differences in double patenting in Australia and New Zealand, this article discusses some of the differences between divisional filing practice in Australia and New Zealand.

Australia

In Australia, a divisional patent application may be filed from a patent application at any time, whilst the patent application is pending. In this regard, the deadline for filing a divisional patent application depends on the parent application.

Please note that an Australian divisional patent application can be filed at any time from filing to three (3) months after advertisement of acceptance in the Official Journal. If, however, the application has not been placed in order for acceptance then the deadline for filing a divisional patent application will be the final acceptance deadline.

In Australia, we typically request a postponement of acceptance to ensure that the Applicant is provided with at least one opportunity to review the claim scope prior to acceptance. This provides the Applicant with an additional opportunity to amend the claims (without incurring a voluntary amendment fee). Furthermore, this also serves as a prompt for an Applicant to consider filing a divisional patent application. For completeness, in Australia, a voluntary amendment fee is applicable if an amendment is made before requesting examination and/or after acceptance and grant.

In Australia, successive divisional patent applications can be filed throughout the patent term.

New Zealand

In New Zealand, a divisional patent application must be filed before the acceptance of the application. Another limitation of filing a divisional patent application in New Zealand is that examination of an application must be filed within five (5) years of the effective filing date (typically the international filing date). This means that, in New Zealand, a divisional patent application must be filed and examination must be requested before this five (5) year deadline; otherwise, requesting examination is not possible after this date.

It is important to note that once the five (5) years from the effective filing date has passed, examination on a divisional patent application cannot be requested. As such, it may be advisable to request examination when filing a divisional patent application to hopefully ensure that we have sufficient time to file a further divisional patent application if acceptance is not achieved or to pursue another embodiment in a divisional patent application.

Please note that, in New Zealand, a voluntary amendment fee is applicable if an amendment is made during examination that is not in response to an objection raised in the Examination Report. Please note that, in contrast to Australia, a voluntary amendment fee is not applicable when amendments are requested prior to examination because this is generally deemed to reduce the examination effort required.

Similar to Australia, we request a postponement of acceptance to ensure that the Applicant has the opportunity to file a divisional patent application. This is particularly important in New Zealand because the New Zealand Patent Office does not provide any warning of impending acceptance. Unlike Australia, the cut off for filing a divisional patent application is the acceptance and so, once accepted, it is impermissible to file a divisional patent application.

Summary

Although Australia and New Zealand are geographically ‘close’, there are some nuances that are specific to each jurisdiction. It should be clear that there are strategies that can be utilized to minimize the fees incurred by the Applicant in both Australia and New Zealand. Please do not hesitate to contact me at Michael Buck Intellectual Property if you require any assistance with Australian and New Zealand patent applications.

by David Tso, Senior Associate



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