India: A Patent Seeker’s Guide To Divisional Applications

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 act.

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 act.

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 application.

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.

Conclusion

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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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