Divisional patent applications, as the name suggests are those
patent applications that have been derived from another patent
application. Section 16 of Indian Patents Act, 1970 deals with the
provisions related to divisional applications.
Section 16(1) of the Patents Act states that "A person who
has made an application for a patent under this Act may, at any
time before the grant of the patent, if he so desires, or with a
view to remedy the objection raised by the Controller on the ground
that the claims of the complete specification relate to more than
one invention, file a further application in respect of an
invention disclosed in the provisional or complete specification
already filed in respect of the first mentioned
While interpreting this sub-section, the Patent Office has
usually held that while a first divisional application out of the
parent application may be allowable, subject to the other
requirements of Section 16 being fulfilled, a second divisional
application or a cascading divisional application out of the first
divisional application may not be allowable. The Patent office has
usually considered the "first mentioned application"
mentioned in Section 16(1) as referring to the grandparent
application in case of a cascading divisional application and not
the immediate parent application out of which the second divisional
application was divided.
However, ambiguity as regards the interpretation of the
provisions of section 16(1) has recently been resolved by the IPAB
with its decision in the matter of National Institute of
Immunology v The Assistant Controller of Patents and Designs
(OA/21/2011/PT/DEL) dated March 25, 2015 wherein the IPAB has set
aside the impugned order of the Controller in view of
non-application of mind and remanded the case back to the
Controller with directions to provide fresh opportunity for hearing
and decide the case on merits.
Brief facts of the case
The original (parent) application no. 8/DEL/1997 was filed on
02/01/1997 and the patent was granted on 14/06/2002 under Patent
No. IN 186770.
The first divisional application No. 346/DEL/2001 was filed by
the appellant on 23/03/2001 and the same was granted on 31/03/2008
under patent no. IN 217322.
The second divisional application no. 264/DEL/2005 was filed by
the appellant on 08/02/2005 on the basis of the objection from
Patent Office in First Examination Report dated 17/08/2004 issued
in the first divisional application no. 346/DEL/2001 wherein it is
specifically stated under SI.3. "Claim 7 to 17" defines
multiplicity of distinct inventions.
However, the second divisional application no. 264/DEL/2005 of
appellant had been refused by the Controller on the basis of
following two grounds:
The subject application is invalid as it is derived from a
divisional application no. 346/DEL/2001 which itself is a
divisional application derived from parent application no.
The subject application is time barred as per Section 16(1) of
the Patents Act, 1970 as it has been filed after grant of Patent
under Parent application no. 8/DEL/1997.
The Board's Decision
The IPAB held that subject application 246/DEL/2005 was filed
prior to the grant of first divisional application and the sequence
of events and the relevant dates make it crystal clear that the
second divisional application no. 264/DEL/2005 was also filed well
within the time of limitation contemplated under Section 16(1) of
the Patents Act, 1970.
Further, the IPAB also stated that affected parties like
appellant should not be left in the lurch mainly on the basis of
the objection raised by the Patent Office which necessitated the
appellant to resort to filing divisional application without any
remedial measures available in accordance with law.
In view of this order, it is quite evident that in case of
divisional application out of another divisional application or
cascading divisional application, the first divisional application
is to be treated as "first mentioned application" as per
Section 16(1) of the Indian Patents Act and the date of grant of
the main patent has no bearing on applicant. This is a welcome
precedent which clears the air for the Applicants to file further
divisional applications out of another divisional application,
subject to fulfilment of other provisions of Section 16 of the
Indian Patents Act.
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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