Experts would agree that the Indian Patent Law and Practice have been divided on the matter of divisional patent applications. This division has led to many aggrieved parties appealing decisions of the Controllers in the Intellectual Property Appellate Board (IPAB). The IPAB, through several judgments over the course of years, has aided in somewhat clearing this cloud of confusion.
In the present Article, we discuss Section 16 of the Indian Patents Act and few sections of India intellectual property law with some of the major decisions related to this Section, including the most recent judgment of UCB PharmaS.A. v. The Controller of Patents & Designs.
Section 16 of the Indian Patents Act
“Section 16: Power of Controller to make orders respecting the division of application. —
(1) According to law of patent, 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 to remedy the objection raised by the Controller on the ground that the claims of the complete specification relating 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 application.
(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter, not in substance disclosed in the complete specification filed in pursuance of the first-mentioned application.
(3) The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.
Explanation.—For this Act, the further application and the complete specification accompanying it shall be deemed to have been filed on the date on which the first-mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.
Section 16 of the Indian Patents Act incorporates Article 4G of the Paris Convention for the Protection of Industrial Property of 1883 and provides for a provision of divisional patent applications. As the name suggests, a divisional application is a division out of the original (parent) application.
A reading of Section 16(1) of the India patent law, first and foremost, suggests that the Applicant(s) of a divisional application has to be the same as that of the parent application. Secondly, a divisional application can only be filed as long as the parent application is pending, and not disposed of. Considering India does not issue an Intention to Grant or Notice of Allowance like the EPO and the USPTO, if the Applicant wants to divide his application, he must do it timely. The third, and perhaps the most debated topic regarding Section 16 is the basis on which an applicant may divide his application. Clause 1 of Section 16 prima facie implies that the Applicant may divide his application either according to his own will or if the Controller (at any time during the prosecution of the parent application), raises an issue of unity of invention, i.e., the patent application contains more than one invention.
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.
Section 10(5): “The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.”
Section 7: “Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office…..”
Section 16(2) makes it clear that the complete specification of the divisional application must be derived from the parent application, and must not be beyond the scope of the parent application.
Section 16(3) suggests that subject matter claimed in the patent application already cannot be claimed in the divisional application as well.
An explanation to Section 16 makes it clear that the divisional application is accorded the same priority date (or filing date, whichever is earlier) as the parent application, such that the right of priority is protected.
Relevant Provisions regarding Divisional Applications in Manual Of Patent Office Practice And Procedure
iii. Examination of a divisional application is always done vis-à-vis the first-mentioned application. If two or more divisional applications are filed based on a first mentioned application, examination of the second or subsequent divisional application(s) shall be done vis-à-vis the first-mentioned application, and other divisional application(s), examined earlier, if any, to avoid double patenting.
- The term of the patent for a divisional application shall be twenty years from the date of filing of the first-mentionedapplication or international filing date in case the application was divided out of National phase application under PCT.
- Claims of divisional application(s) shall be based on the claims of first mentioned (or earlier application for that matter) from which instant application is divided out and no addition of claims, which do not fall within the scope of said claims, is allowable.
Major Decisions concerning Divisional Patent Applications in India
In the landmark case of L.G. Electronics v. Controller of Patents (2011), the Korean applicant, while quoting Section 16(1) of the Indian Patents Act contented that, “if he so desires” empowers him [the Applicant] an unconditional freedom to file a divisional application even when there is no plurality of distinct inventions or inventive concepts.” In response, the representative of the Indian Patent Office argued that “The heading of Section 16 reads as “Power of Controller to make orders respecting the division of application.“The IPAB held that “Right to file divisional application indeed rest with the applicant but the power to ascertain its allowability is vested with the Respondent [Controller]” and that, “the existence of a plurality of invention in the patent application is the sine qua non for a divisional application by the applicant whether it is suo moto as to remedy Controller's objection.” The Board further held that “the phrase “if he so desires” used in Section 16 is not unconditional and it does not give the applicant an unqualified liberty to file a divisional application even when there is no situation of a plurality of the distinct inventions contained in the mother application.”
In Bayer Animal Health GMBH, Germany Vs. Union of India the IPAB reiterated the concept from LG Electronics, while also stating that “Section 16 entitles the applicant to file such an application if he desires to remedy the objection that the claims relate to more than one invention or to file a further application in respect of an invention disclosed in the application already filed. The Act does not empower or give any patent applicant the right to resubmit the same application as a divisional application.” The decision was also upheld in Syngenta Participations AG v Union of India.
In National Institute of Immunology v. The Assistant Controller of Patents and Designs and Milliken & Company v. Union of India and Others, the IPAB considered the matter of the validity of grand-children applications, i.e., whether a divisional application out of another divisional application is allowed in India. In both these cases, the IPAB allowed for such grand-children applications.
In another landmark case of ESCO Corporation v. Controller of Patents and Designs, the IPAB while establishing the principle of “One Application One Inventive Concept“, laid down the formal grounds for filing a divisional application, i.e., “Either by the applicant (suo-moto), if he so desires or to remedy the objection raised by the Controller on the ground of plurality of invention. In either case, the existence of a plurality of invention in the patent application is the sine qua non for a divisional application.” Further, the Board held that “The claims of divisional application shall have their route in the first-mentioned(parent) application. This is true even for divisional to the divisional application as well. The routes of subsequent divisional applications also should be from the first-mentioned application. The divisional application shall not be filed with the same set of claims as to the first-mentioned application.”Therefore, the ESCO Corporation Case also verified the validity of grand-children applications, as long as other requirements of Section 16 are met.
On October 27, 2020, in UCB Pharma S.A. v. The Controller General of Patents & Designs, the IPAB further clarified Section 16(1) of the Indian Patents Act and moved to restrict the subject matter eligible for divisional protection. The Board held that “addition of new claims from the description, which were not present in the body of the patent claims, cannot form part [of] the divisional application, as per the teachings of Section 16 of the Patents Act, 1970.” In other words, only claims (and not matter disclosed otherwise in the specification) of the parent application, which were of a different inventive concept from the rest of the claims can form part of a divisional application.
This decision of the Board is the further reaffirmation of teachings of the Manual of Patent Office Practice and procedure, which mandates that claims of divisional application should be derived from the claims of a patent application.
The Indian Patent Law and Practice concerning divisional applications, though codified, has time and again been brought in front of the Intellectual Property Appellate Board (IPAB) of India. The IPAB has attempted to set uniformity to the otherwise different practices often adopted by the different Controllers in the Indian Patent Office.
Having said the above, a very important point to note here is that the IPAB was abolished by way of the Ordinance dated April 04, 2021. Thus, ambiguity remains among the Controllers at the Indian Patent Office, especially after the constricting judgment of the UCB Pharma case. Given that the future appeals are going to be handled by the High Courts in India, patent agents and applicants alike expect further clarity on the law and practice related to divisional applications in India.
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.