India's Patents Act, 1970, prescribes that a patent
application shall be for a single invention only. To offer
protection to related inventions disclosed in the application, the
act provides for the filing of a divisional application in respect
of those additional inventions.
Section 16 of the act states that the applicant may, at any time
after filing an application but before a patent is granted, on its
own initiative or in response to an objection raised by the
controller on the ground that the application relates to more than
one invention, file a further application for an invention
disclosed in the previous application.
In this way the act provides a further opportunity for the
applicant to get protection for an invention which was disclosed
erroneously in an application.
Recently the Intellectual Property Appellate Board (IPAB) passed
an order in the matter of Bayer Animal Health GmbH v Union of
India & Controller General of Patents on the issue of
filing of divisional applications in India. The IPAB in this case
looked into the different aspects of divisional practice.
Brief facts of the case
The appellant, Bayer Animal Health, filed a patent application
in Delhi in 1997. The first examination report (FER) objected that
the invention was a pharmaceutical product with a chemical product
base and was not patentable under section 5(1)(b) of the act.
Neither the appellant nor its agents replied to the FER within the
time prescribed and the application was deemed to be abandoned
under section 21(1) of the act.
After the Patents (Amendment) Act, 1999, came into force, making
chemical substances patentable, the appellant filed a divisional
application for the same invention. The divisional application was
examined by the Patent Office and the FER objected on the ground
that it was not a valid application under section 16 of the
The appellant responded to the objection, saying that the
divisional application was valid and the examiner had incorrectly
interpreted section 16.
The application was again examined and again it was objected
that the application was not a divisional application as section 16
requires the parent application to contain more than one invention.
Further, it was stated that the divisional application contained
exactly same claims as the parent application. The examiner also
noted that the divisional application was filed to protect the same
invention as the parent application.
Counsel for the appellant submitted before the IPAB that the
appellant had validly filed a divisional application before
abandoning the parent application claiming the subject matter for
which a patent was not previously granted. However the subject
matter was now a patentable subject matter. Therefore the
divisional application was a valid application under section 16 of
The board's decision
The IPAB after hearing the appellant's counsel at length
observed that section 10(5) of the act explained that the claims of
the complete specification must relate to a single invention, or to
a group of inventions so as to form a single inventive concept.
Section 16 entitles the applicant to remedy the objection that the
claims relate to more than one invention or single inventive
concept by filing a further application in respect of an invention
disclosed in the first application. The act does not empower an
applicant to resubmit the same application as a divisional
The IPAB concluded that the "basis of a divisional
application is the existence of a plurality of invention. This is a
sine qua non for seeking a division of an application". The
divisional application would not be allowed on any other grounds.
Accordingly the IPAB held that unless the divisional application
satisfies the test under section 16 of the act, it cannot be
entertained. The appeal was dismissed.
The filing of divisional applications for inventions which were
not granted patents earlier is a misuse of section 16. To get one
more chance for the grant of patent, applicants and agents
fraudulently file divisional applications for inventions which were
previously rejected. The IPAB and the controller rightly hold that
divisional applications will be allowed only if they pass the test
of plurality of inventions in the parent applications.
For a divisional application, it is important to keep in mind:
(a) the parent application should contain subject matter which can
be claimed in a divisional application; (b) the claims of the
divisional application should be supported by the parent
application; (c) the parent and divisional applications should not
claim the same subject matter; (d) the divisional application
should not include any matter which is not substantially disclosed
in the parent application.
This article was first published in India Business Law
Journal, February 2013 issue.
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