Divisional application patent practice in South East Asia

Patent law harmonisation is an emerging trend across the ASEAN region. We see this with Thailand joining other ASEAN nations (Indonesia, Malaysia, The Philippines, Singapore and Vietnam) as a signatory to the PCT, and within the ASEAN economic region, we see the development of a patent prosecution highway in the form of ASPEC. However, there remain differences in the patent law and procedure of ASEAN nations. Here we study the various points of difference in divisional application practice among the ASEAN nations, and compare these points with Australian and New Zealand divisional practice.

Divisional applications for response to lack of unity

Perhaps the foremost reason to file a divisional application is to address lack of unity in the claims i.e. to cancel claims without prejudice from a parent application and pursue the cancelled claims in a divisional. This is analogous to US divisional practice. However, as shown in the accompanying table, it is important to note that unlike the US, pre-allowance due dates apply to the filing of a divisional application in a number of countries. See in particular, The Philippines, Malaysia, Thailand and New Zealand.

Further, while all of the ASEAN nations apply the PCT rules to determine unity of invention, (and therefore are likely to arrive at the same unity outcomes expressed in an International Search Report) the due dates as to when the non-unified claims must be protected are different, even among the countries with pre-allowance divisional due dates. Further, Malaysia applies 2 different divisional due dates, one of which applies to lack of unity responses only.

The message surely is that if you wish to pursue claims directed to a separate invention identified by an examiner, you need to do more than simply monitor the allowance date of the parent application. Depending on the relevant ASEAN nation, you may need to have your non-unified claims prepared for divisional filing, well before allowance of the parent.

Continuation practice

The second reason for filing a divisional might be to continue prosecution where allowance cannot be obtained on a parent application. While none of the ASEAN nations provide a continuation application per se, a divisional application may be used in a manner that is analogous to US continuation practice. However, this does not apply in all ASEAN nations, with The Philippines being a notable standout. In The Philippines, your prospects of success are contingent on the prosecution of the parent application.

Those nations that have a pre-allowance due date that is well before allowance (for example, The Philippines, Malaysia and Thailand) pose a particular problem in circumstances where the significance of examiner objections is not completely understood until after the due date for continuation has passed. This is particularly of concern where the examiner takes a piece-meal approach to examination and identifies prior art or other validity issues after the divisional due date has expired.

Continuation in part practice

It will be seen from the table that none of countries in the South East Asia region - except for Australia, allow a divisional application to protect a modification of subject matter in part disclosed in a parent application in a manner analogous to the operation of a US continuation in part application. Specifically, all ASEAN countries require that the claimed matter in a divisional application must find basis in the disclosure of the parent.