A divisional application can be filed either voluntarily or in response to an objection by the Indian Patent Office (IPO). Indian courts have held that the presence of multiple inventions in the parent application is a necessary criterion for divisional applications. Filing a divisional application with the original set of claims just to extend the prosecution process is considered a malpractice by the IPO and, therefore, may not serve the intended purpose.
Timing: A divisional application in India can be filed at any time before the grant of its parent application. However, there is no provision to demand issue fees from the applicant or send an advance notice to the applicant about the decision taken by the IPO.
A sudden decision by the IPO to grant a patent after filing a response to a first examination report (FER) actually forecloses any opportunity for the applicant to file a divisional application. In case an objection remains outstanding after filing a response to the FER, the IPO has to issue a hearing notice to the applicant before taking any adverse action in the matter. The oral hearing process extends the time window to file the divisional application. However, since an extended time window cannot be guaranteed as a patent may also be granted within a few days after filing the response to FER, it is better to file a divisional application as early as possible.
Fees and examination: There is no provision to delay the payment of the filing fee for a divisional application or file the divisional application without claims to save the claim fee at the time of filing. In fact, in most cases, the request for examination (RFE) along with examination fee needs to be filed with the divisional application.
Divisional filing prompted by IPO: Filing of divisional applications in response to an objection by the IPO is quite straight forward. As a preferred practice, a divisional application may be filed for one or more of non-elected groups.
Deferring the filing of further divisional applications may pose difficulties for the applicant in pursuing them later in cases where the parent application is granted.
Voluntary divisional: Any number of voluntary divisional applications can be filed until the parent application is finally adjudicated. However, once a decision on the parent application is published by the IPO, the applicant loses the right to file voluntary divisional applications based on the parent application. It is pertinent to note here that a voluntarily filed divisional application may be questioned by the IPO on the ground of double patenting.
Amendments in divisionals: As the provisions relating to claim amendments require that the claims cannot be broadened during the course of patent prosecution, it may not be a good idea to pursue original claims or placeholder claims or replacement claims through a divisional application. The claims of the divisional application need to be distinct from the claims of the parent application right from the beginning.
Division of divisionals: According to judicial precedents, a divisional application can be further divided due to lack of other remedies. For instance, if the IPO raises an objection for lack of unity in a voluntary divisional application, a further divisional application may be filed on the basis of an earlier divisional application even after the grant of the parent application. In another example, if the IPO objects to the addition of new claims in a divisional application, another divisional application may be filed to pursue the new claims.
Solutions: When a divisional filing opportunity is lost due to the sudden grant of an Indian patent, there is no direct remedy. Filing a review petition before the IPO or an appeal before the appellate board may not be practically useful. Therefore, the applicant may consider filing a patent of addition in such cases. However, considering that the patent of addition is granted only for an improvement over the main invention there has to be an actual addition, i.e. at least one new and not necessarily inventive feature that is not disclosed in earlier applications needs to be present in the independent patent of addition claim. Another solution could be to file a divisional application based on another pending Indian application describing a similar subject matter.
However, finding literal support for the desired set of claims in another application may be challenging. Another solution could be to file a divisional application based on another pending Indian application having the same origin, i.e. the same set or superset of priority applications as that of the granted Indian patent.
Joginder Singh is an associate partner with LexOrbis.
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