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Added matter in divisional applications (Section 84(1))

7.49 Divisional applications that are filed in respect of matter disclosed in an earlier application and claim the filing date of the earlier application under Section 20(3), Section 26(11) or Section 47(4) could possibly introduce added matter, that is, matter extending beyond that disclosed in the earlier application.

7.50 The provisions relating to the manner in which such divisional applications that have introduced added matter are dealt with are set out in Section 84(1) as follows:

(1) An application for a patent which —

(a) is made in respect of matter disclosed in an earlier application, or in the specification of a patent which has been granted; and

(b) discloses additional matter, that is, matter extending beyond that disclosed in the earlier application made under this Act or in the application made under the United Kingdom Patents Act 1977 or the application under the European Patent Convention designating the United Kingdom filed at the European Patent Office from which the filing date and right of priority is sought to be derived, as filed, or the application for the patent, as filed, may be filed under section 20(3) or 47(4) or section 116(6) of the Patents Act (Cap. 221, 1995 Ed.), or as mentioned in section 26(11), but shall not be allowed to proceed unless it is amended so as to exclude the additional matter.

7.51 In deciding whether a divisional application comprises additional matter, the Examiner should take into account the same test and considerations that apply for added subject matter in application and patent specifications discussed in the previous sections.