MAINTAINABILITY OF DIVISIONAL APPLICATIONS
As per the Indian laws, Section 16 of the Indian Patents Act, provides the foundation for dealing and filing divisional application. The need to file a divisional application arises if the main application also known as parent application includes more than one invention. Two or more distinct inventions in one application is hence a requirement for filing a divisional application. In such cases, the main application is divided into separate applications, related to each other, known as divisional applications, to protect the interest of applicant. If the parent application is filed with multiple inventions covered under one application, then there is objection from the patent office due to lack of unity in main application. In such cases, the main application needs to be divided into separate applications corresponding to a common date of priority. The original application thus becomes the parent application. The priority date of all the divisional applications filed corresponding to main application retain the priority date of the main application only.
A divisional application is normally filed as a remedy to objection raised by the Controller of Patents. The same is examined separately after a request for examination is filed as per the provisions of The Patents Act, 1970. A divisional application can be filed at any time before the grant of the patent for main application.
The patent registered under a divisional application also has a duration of 20 years from the date of filing of the parent patent application. At Knowledgentia Consultants, which is one of the best corporate international law firm in India, our experts are well equipped to handle global IPR Protection issues relating to patents and other kind of IP.
CONDITIONS FOR FILING DIVISIONAL PATENT APPLICATIONS
- The main patent application is filed for multiple inventions which are construed to be lacking unity of invention as per the patent laws of the country, or
- In order to address the objections raised by the Controller at examination of patent application
However, the claims sought to be separated from the parent patent application and incorporated in the divisional patent application must be based on matter disclosed in the provisional or complete specification already filed in relation to the first stated application. The Controller is empowered to seek the amendments in the complete specification of the divisional application to ensure that there is no overlapping of claims between these applications. The later application should not include any claim already claimed in the parent application.
BOEHRINGER INGELHEIM INTERNATIONAL GMBH V. THE CONTROLLER OF PATENTS & ANR. DATED 12TH JULY 2022
In this case, an appeal was filed, against order by which the Controller of Patents rejected the request of the Applicant for pursuing a divisional application. The Controller, while rejecting the divisional application had stated that the divisional application had similar claims, as had already been proffered in the refused amendment applications and the divisional application does not fall within the scope of the parent application. The Applicant in this case had filed a National Phase PCT Application where the patent specification had a total of 1 to 18 Claims. The objections in the FER included lack of novelty and inventive step. Pursuant to this hearing notice, the objections raised were contested by the Applicant. The Applicant sought to file a divisional application by creating an amalgam of Claims 1 to 11 and Claims 1 to 15.The Controller while applying Section 59 of the Patents Act, 1970 held that the said amended claims i.e., Claims 1 to 11 and Claims 1 to 15 are beyond the scope of originally filed Claims and rejected the same. After this decision was rendered, in so far as the pending divisional application was concerned, the FER was issued. A response was filed to the said FER and a pre-grant opposition was also filed in this divisional application. The reply statements were completed in the pre-grant opposition and after hearing the pre-grant opponent and the Applicant, the divisional application was refused. The reasoning given by the Controller in the impugned decision was that the division itself could not have been permitted as the Amendments were rejected in the parent application. Since the current Claims had been already examined and refused, the same Claims cannot be allowed in another application. The Controller also reproduced various other objections raised by the pre-grant opponent.
HIGH COURT RULING AND OBSERVATIONS
In this landmark case, while observing that divisional application is maintainable only when the claims of the parent application disclose a “plurality of inventions”, the High Court in the present case held that divisional application cannot be filed since there was no “plurality of inventions” in the parent application. The Court further observed that as the product Claims were not pursued in the original application even though the said products were clearly disclosed in the content of the complete specification, the products ought to be treated as having been disclaimed. Thus, the parent application cannot be interpreted to have included a “plurality of inventions”, i.e., completely new product Claims, patentable by way of a divisional application.
The Court further held that an invention primarily is defined by the claims. While the claims do have to be based on the disclosure in the specification, however even if a person does not read the complete specification and wishes to identify the invention, the place to look for it is in the ‘Claims’. If applicants are permitted to file divisional applications on the basis of disclosure in the complete specification, without such inventions being claimed in parent applications, it would defeat the fundamental rule of patent law i.e., ‘what is not claimed is disclaimed’. Therefore, “unity of invention” or “plurality of inventions” and whether they form a “single inventive concept” has to clearly exist and ought to be construed from a reading of the claims of the parent application.
For a divisional application to be valid, it must be based on an inventive concept distinct from the parent application. In other words, if the original application claims a single invention, or more than one invention with the same inventive concept, a divisional application would not be maintainable. Section 7 and Section 10(5) of the Indian Patents Act further corroborate this fact. Knowledgentia Consultants has earned a name as one of the most client focused firm in India with one of the best patent consultants in India. We are you one-stop solution for all kinds of legal, compliance and supplemental patent matters. In case of any query regarding this matter you may email us at email@example.com or visit our website -https://knowledgentia.com/.
PUBLISHED ON 06.08.2022 BY MS HARINDER NARVAN, MS APARNA JAIN AND MS AASHRIKA AHUJA