New practice relating to divisional applications

According to the established practice of the Israeli Patent Office, divisional applications could be filed at any time up to the acceptance of the parent application. However, on 5th June 2008 the registrar issued Circular Letter MN62, which provides that divisional applications must be filed within four months of the final lack of uniformity objection. If a divisional application is filed after this deadline, an extension fee will be payable. The extension fee may be paid when the divisional application is filed. The final deadline for filing a divisional application still remains the date of acceptance (subject to payment of the extension fee). The new provision applies only to lack of uniformity objections that are included in office actions dated 5th June 2008 or later; actions with an earlier date are still subject to the previous practice (ie, divisional applications can be filed until acceptance of the parent application without extension fees).

According to Section 8 of the Patents Law, a patent may be granted only for a single invention. Section 24(b) stipulates that where an examiner finds that the claims do not meet the requirements of Section 8 (ie, they are devoid of uniformity), the registrar has the authority to “direct the applicant to divide his application”. Until now, the provisions of Section 24(b) have not been implemented by the examiners and the lack of uniformity objection has not been treated as a direction under Section 24(b).

The circular letter states that from now on, whenever a lack of uniformity objection is raised, it will be accompanied by a direction to divide the application under Section 24(b).

According to Rule 51(a), a divisional application must be filed within four months after the date on which the applicant was directed by the registrar to divide the application. Consequently, there will be a four-month term for filing a divisional application from the date on which the lack of uniformity objection was raised (which is the same four-month term in which to file a response to an office action). If the lack of uniformity objection is contested by the applicant and the examiner maintains the objection, the four-month term will apply from the date of the notification in which the examiner advised the applicant that the lack of uniformity objection still stood.

The final date to file a divisional application remains the date of acceptance of the application. However, if the divisional application is filed after the four-month deadline has expired, an extension fee must be paid. Thus, in order to avoid payment of unnecessary extension fees, divisional applications should be filed as early as possible.