The “Raising the Bar Bill”, introduced on 22 June 2011, attempts to support innovation in Australia. One aspect, addressed by Schedule 3 of the Bill, seeks to reduce the abuse drawing out patent applications by filing a ‘daisy chain’ of divisional applications.
Specifically, it is currently possible to file a divisional application up until the date of grant of a patent. If the divisional claims matter outside the scope of the accepted claims of the parent, the divisional application must be filed within three months of advertisement of acceptance of the parent application. Furthermore, it is currently possible to convert any application into a divisional application of an earlier filed application if the application could have been filed as a divisional application at the time of filing.
Conversely, the Bill changes the deadline for filing divisional applications or for converting applications to divisional applications to three months from the date of advertisement of acceptance of the parent application.
As such it is important to remember that under the new provisions it will no longer be possible to file divisional applications during opposition proceedings, for example to overcome the requirement for inventive step by filing a divisional innovation patent application. Furthermore, there will be less scope to convert an application into a divisional in the face of a novelty objection in respect of an earlier filed application by the same Applicant.