Distinctness leads to division

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Vidisha Garg at Anand and Anand explains the significance of a recent decision on divisional applications

India’s patent system has seen several changes as a result of the judicial interpretation of substantive provisions of the Indian Patents Act, 1970. The most recent change is in relation to the filing of divisional applications under section 16. The Intellectual Property Appellate Board (IPAB) has recently allowed the filing of a second divisional application derived out of the first divisional application.

Vidisha Garg
Vidisha Garg

Background

Under section 16(1), a person who has made an application for a patent may, at any time before the grant of the patent, file a further application (a divisional application) in respect of the invention disclosed in the provisional or complete specification already filed in respect of the first-mentioned application (the parent application). The applicant can do this if he so desires or to remedy objections raised by the controller that the claims of the complete specification relate to more than one invention.

According to section 16(2), a divisional application has to be accompanied by a complete specification which shall not include any matter not disclosed in the complete specification filed in pursuance of the patent application. A divisional application is deemed to have been filed on the date on which the parent application has been filed and the term of the said application runs from the date of filing of the parent application.

The IPAB in LG Electronics Inc v Controller of Patents, held that if the claims of the invention disclosed in a parent application do not relate to a single invention or to a group of inventions forming a single inventive concept, the applicant can file divisional applications out of that application either of his own (suo moto) or when the objection of disclosure of more than one invention is raised by the controller.

Therefore, the underlying requirements for filing a divisional application are 1) it is to be filed during the pendency of the parent application; and 2) it is to be filed only if the parent application discloses distinct inventions. In addition, there is no limit to the number of divisional applications arising out of a single parent application, and the scope of the claims of the parent application should be distinct from that in the divisional application. Further, only the controller has the power to adjudicate on the maintainability of the divisional application.

A change to the status quo

The said IPAB’s order had prompted a change of practice at the patent office, as a first divisional application and/or a second divisional application can be filed only until the grant of the parent application. After the divisional application has been filed it can be continued by itself as being a substantive application irrespective of the fate of the parent application. But, once the parent application is granted, refused, withdrawn or abandoned no further divisional application can be entertained.

A recent decision

In National Institute of Immunology v Asst Controller of Patent & Design, the IPAB recently allowed the filing of a second divisional application arising out of a first divisional application. The case before the IPAB was whether the filing of a second divisional application is maintainable after the grant of the parent application. The applicant had filed a divisional application before the expiry of the parent application, which was subsequently granted. During the prosecution of the divisional application, the controller had raised an objection to the plurality of distinct inventions. In order to remedy the objection, the applicant filed a second divisional application.

The controller refused to grant the second divisional application as 1) the application was invalid as it was derived from a divisional application; and 2) the application was time barred under section 16(1), as it was filed after grant of the parent application.

While setting aside the controller’s order the IPAB held that the finding that the second divisional was filed after the grant of the parent application was incorrect and contrary to the facts of the case. The objection of multiplicity in the first divisional application, necessitated and compelled the applicant to prefer the second divisional application which was filed before the grant of first divisional application. Thus, the second divisional application was filed well within the time of limitation contemplated under section 16(1).

In so far as the filing of second divisional applications are concerned, there is nothing in the law that states that one cannot have a second divisional application out of the first divisional application. However, a narrow interpretation of section 16(1), by the patent office has led to the abandonment of several such divisional applications. The IPAB’s order comes as a respite for applicants who need to file a divisional of divisional applications. However, the criteria for filing the second divisional remains the same – multiplicity or distinctness and the pendency of the applications from which it is being derived.

Vidisha Garg is a partner at Anand and Anand.

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