When filing and prosecuting PCT national phase patent applications for foreign clients in South Africa, patent attorneys are often instructed, at a later stage, to file one or more so-called divisional applications in respect of part of the matter disclosed in the first-mentioned application (e.g. in order to pursue claims of a different scope). This article merely aims to emphasise the fact that, due to the unique nature of these applications, care should be taken when filing these applications in order to ensure that they retain the same priority rights as the parent application.

Section 37 of the South African Patents Act provides for the filing of so-called divisional applications and reads as follows:

“Procedure in case of amendment of application or lodging of fresh application

(1)  Where at any time after an application has been lodged at the patent office and before it is accepted, a fresh application is made in the prescribed manner by the same applicant in respect of part of the matter disclosed in the first-mentioned application, the registrar may, on application made to him in the prescribed manner before that application is accepted, direct that such fresh application be ante-dated to a date not earlier than the date on which the first-mentioned application was so lodged.

(2)  A patent granted on such fresh application shall not be revoked or invalidated on the ground only that the invention claimed in such fresh application is not new having regard to the matter disclosed in the first-mentioned application.”

Based on this section, a divisional application can be divided out of a prior filed parent application (e.g. a PCT national phase application), provided the parent application has not yet been accepted.

In order for the divisional application to obtain the same priority rights as the parent application, the last part of subsection 37(1) states that the divisional application can be ante-dated to the lodging date of the parent application which, where the parent application is a PCT national phase application, is the international filing date in terms of section 43F(3)(fA). By ante-dating the divisional application to the international filing date of the parent application, the ante-dated filing date will then in all likelihood be within the 12 month convention period from the filing date of the priority document of the parent application, which means that the divisional application will be able to claim convention priority from the parent application’s priority document.

A divisional application should therefore in essence be treated as a convention application which should be ante-dated in order to claim convention priority from the parent application’s priority document.

A potential problem arises where an applicant wishes to file a second (or further) divisional application. More specifically, the question in this instance is whether the second divisional application must, in terms of the Patent Act, be divided out of the parent application, or whether it can rather be divided out of the first divisional application. This issue is often encountered in practice as the parent application is often further in its prosecution than the first divisional application (due to its earlier physical filing date at the Patent Office). An applicant may, for instance, wish to file a second divisional application at a stage where the first divisional application is still pending, but where the parent application has already been accepted (or even granted).

If the second divisional application is divided out of the first divisional application, then the “first-mentioned application” referred to in section 37(1) will be the first divisional application. The question then is whether “the date on which the first application was so lodged” is the actual physical filing date of the first divisional application or whether it is the ante-dated filing date. If it is the physical filing date, then the second divisional application will only be able to be ante-dated to that date, which means that it will probably not be able to claim convention priority from the parent application’s priority document.

Clients should therefore preferably be advised that, if they foresee the possibility of filing two or more divisional applications, the acceptance of the parent application should be delayed in order to base all divisional applications on the parent application, in order to avoid any potential argument down the line regarding the validity of the divisional application’s priority claim.

Contact: Danie Pienaar – Professional Assistant , Patent Department, Adams & Adams

Verified by – Russell Bagnall, Partner, Patent Department, Adams & Adams