Case management of divisional application: an IP Whiteboard investigation

If, like the IP Whiteboard team, you’re an avid reader of Patents Office decisions, then you may have noticed an increase in decisions where divisional applications have been refused by the Commissioner (we count 19 such decisions in the past 4 months!).  Why the sudden increase?

As it turns out − and as some of you will be aware − from October 2010, the Patents Office has introduced case management procedures for divisional applications.  Under the new procedures, requests for examination of all divisional applications have been expedited.  Where the Examiner’s report raises a ground of objection that is substantially identical to a ground previously raised in relation to the parent application, the report will notify the applicant that if the ground of objection cannot be overcome within two months, then the divisional may be amended or refused.

For more information, see part 2.10.11 of the Patent Examiners Manual.

About the Author

James Ellsmore
James is a senior associate with King & Wood Mallesons' Intellectual Property team in Sydney. James assists clients to resolve intellectual property disputes, with a particular focus on patents, pharmaceuticals and the life sciences. He has acted for a variety of clients in matters concerning patent infringement and revocation proceedings in the Federal Court of Australia, patent opposition proceedings before the Commissioner of Patents, and matters arising from patent licence and technology agreements. James also has experience in the preparation of commercial, R&D and IP agreements for leading universities, research organisations and pharmaceutical companies. He also advises clients on regulatory issues affecting clients in the industrials, consumer and health sectors.
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