The recent Australia Patent Office decision in Bioverativ Therapeutics Inc. [2023] APO 64 highlights one aspect being, if a patent applicant wishes to seek an extension of time to file a divisional application under section 223(2) Patents Act 1990 (Cth), the applicant must satisfy the following grounds:
(i) That the applicant must possess the requisite overarching intention to file a divisional application before the relevant deadline. Under Section 79B Patents Act 1990 (Cth), the deadline to file a divisional application is within three (3) months from the advertised date of the notice of acceptance of the parent application; and
(ii) That there was an error, omission or circumstance beyond the applicant’s control, that frustrated the execution of the applicant’s overarching intention from being carried out.
Importantly, it is not possible to obtain an extension of time to file a divisional application, if the requisite overarching intention of the applicant to file the divisional application was materialised after the relevant deadline. The applicant must file evidence in the form of a declaration to support the request for an extension of time.
Although the circumstances were factually nuanced, this decision also highlights the need for applicants to file unambiguous declarations to the Commissioner of Patents when supporting the request for an extension of time.