Where there has been no progress, for example, no responses have been filed to the first report in the parent and grandparent applications, we suggest amending the claims in a preliminary amendment and presenting arguments to the Examiner in anticipation of the first report. If the Supervising Examiner deems there has been no progress in the parent, grandparent and great grandparent applications, it appears that they can recommend case management or a hearing to achieve prompt resolution.įor all divisional applications with a great grandparent application, we are now advising clients to review the prosecution histories of the parent, grandparent and great grandparent applications before filing or shortly thereafter. Third reports, as a matter or procedure, are always reviewed by a Supervising Examiner. The Australian Patent Office has thus proposed that any first examination reports that are issued on a divisional application that has a great grandparent (or earlier) is to be treated to be equivalent to a third examination report. In certain situations, it may be appropriate to also consider case management or setting matters for hearing where no progress is made in grandparent and parent applications. If the supervising examiner is of the opinion that no progress is being made, the case should be discussed with the Supervising Examiner (Patent Oppositions), including whether to set the matter for hearing or case manage the application to ensure a prompt resolution of its status. The Examiner’s Manual, at section 2.10.9.1, now reads as follows:įirst reports issued on divisional applications with great grandparent or earlier ancestors are to be treated as equivalent to adverse third reports, and are therefore to be reviewed by a supervising examiner. Other reasons include difficulties in overcoming substantial objections, for instance novelty, inventive step or manner of manufacture objections (otherwise known as ‘ineligible subject matter’ objections). These reasons may include that the applicant may wish to delay acceptance because the equivalent applications are not yet allowed in other jurisdictions, such as Europe, US, China or Japan, or they may wish to pursue additional inventions. There can be various reasons why the divisional application has not been able to achieve acceptance within the 12 months of the issuance of the first examination report. In this way, a divisional patent application may have a parent application, grandparent application, great-grandparent application and so forth.
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