Divided We Fall – New Rules Limit Divisional Applications in Australia

Posted on February 14, 2011 by Warren Woessner

This is a guest post from Bill Bennett of Pizzeys.

Where a divisional application presents claims for examination which have been previously rejected in the parent (or grand-parent) application, then the APO will give the applicant only 2 months to respond and overcome the rejection (rather than the usual 21 months).

If the applicant does not overcome the rejection within the 2 month period, the APO will offer the applicant the opportunity to be heard before any further action (e.g. formal refusal of the application) will occur.

Full information regarding this new procedure for the case management of divisional applications can be found in the Examiner’s Manual (please refer to part 2.10.11).  You can find the Examiner’s Manual here.

The APO has just issued the first 5 formal refusals of applications under this new system.  Please note that in each of these 5 applications, the applicant failed to respond in the 2 month period AND the applicant failed to respond to the opportunity to be heard.  In each of the 5 cases, the application was then formally refused by the APO.  Links to each of the 5 formal refusals are provided below.

Schering

Scott Laboratories

McNeil PPC

Qualcomm

Senomyx

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Poisonous Divisionals — Just When You Thought It Was Safe …

Posted on February 10, 2011 by Warren Woessner

This is a guest post from Malcolm Lawrence of HLBBshaw, European Patent Attorneys in Cambridge, UK.

EPC Law & Practise – Poisonous Divisionals

 

1.  Introduction and Background

1.1 We have identified and researched a highly significant anticipation threat to EPC patent portfolios posed by the widely used strategy of filing EPC divisionals.  We have recently distributed a full paper on this subject (see the Note at the end of the present paper) and what follows is an abridged version.

1.2  The facility for filing EPC divisionals has been widely used by applicants for many years, both to deal with non-unity and for other purposes, and very large numbers of “voluntary” divisionals were filed in the period leading up to October 1, 2010.   The threat, which has not been recognized previous to our work, is therefore widespread in effect, its discovery pointing to a common, significant omission in strategic planning of divisional filings. We have already applied the threat in EPC oppositions.

2. The Proposition and how it Operates

2.1  We postulate the disruptive original proposition that an EPC application and its divisional(s) may be mutually anticipatory where the subject-matter disclosed is materially the same (as is almost always so).

2.2  Such mutual anticipation can occur where, for example, some (claimed or unclaimed) relevant subject-matter in a parent is entitled to a declared priority date and some(claimed) subject-matter in a divisional is entitled to either a later declared priority date or to the EPC filing date.  As depicted in Figure 1 below, the most common scenario where this kind of conflict occurs will involve generic claimed scope in a divisional disentitled to priority and a parent specific embodiment which falls within its scope and is entitled to priority (or vice-versa).

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UK Patent Applications On The Fast Track – Nothing Extra Payable

Posted on February 8, 2011 by Warren Woessner

Guest post from Paul Cole of Lucas & Co.

Claims searched, examined and approved for grant (subject to publication and possible third party comments) within six working days? Not only theoretically possible but actually achieved in an application filed earlier this year at the UK IP Office through our firm. And in contrast to the situation in the US, achieved at no additional cost to the applicant.

The UK IP Office offers three types of accelerated service:

  • Combined search and examination (CSE)
  • Accelerated search and/or examination
  • Early publication

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Get Your Application On The Fast Track – For A Price

Posted on February 7, 2011 by Warren Woessner

On Friday, the PTO proposed changes in the rules to permit applicants for U.S. patents to receive “prioritized examination” (76 Fed. Reg. 6370 (Feb. 4 2011) – a copy is attached below). This program is a remnant of the three-track examination the PTO proposed in June 2010, whereby applicants could pay to delay examination for 30 months, pay to accelerate or do nothing.

Apart from the $4000 fee, there are few formal requirements. Claims must be kept to four independents and 30 total, but there is no longer a search and analyze requirement as there is in the seldom-used accelerated examination program. Note that, right now, there is no break for small entities and the goal of concluding prosecution within 12 months only means that applicants get at least two actions. And applicants better be ready to move it — if an extension of time is requested, special status is lost. This program will be first-come, first-served for the first 10,000 applications to apply.

I am not sure whom this program is intended to benefit (or if any thought has gone into this). The price will deter most universities, who can barely afford to file provisionals. However, the occasional lucky university with a big-name licensee and a hot invention may decide to get on the track. I can also see this program being used by big pharma to get “add-on” patents to list in the Orange Book as the primary patents covering Rx drugs approach expiration. The program could also help start-ups, many of which need to demonstrate the patentability of their core innovations to investors. The class of applicants who will need to decide quickly are those who have pending provisionals or PCTs when the rules are adopted, and that may be fairly soon. Since the rules are not retroactive, it may be a good idea to delay filing regular U.S. applications on inventions that would benefit from early allowance.

Fed Reg 2_4_11

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