The presence of multiple inventions in a parent application is an essential criterion for granting divisional patents in India. Divisional applications can be filed at any time before the grant of the parent application either voluntarily or in response to an objection based on lack of unity during the examination of the parent application.
In the case of voluntary filing of divisional applications, if the patent office objects on the grounds of double patenting at the time of examining the divisional application, the burden of proof for establishing the presence of multiple inventions in the parent application lies with the applicant. When the patent office identifies multiple inventions and raises an objection in the examination report of parent application, such an objection can be overcome by explaining the unity of invention or electing one group of claims for the parent application so that the non-elected groups can be pursued through one or more divisional applications.
It is generally advisable to file divisional applications as soon as possible because there is no provision for a notice of allowance in India and the sudden grant of a patent after filing a response to the examination report for the parent application can result in loss of the opportunity of filing divisional applications on claims that may be patent eligible. While most patent applications go through an oral hearing in India, implicitly providing one more opportunity to file divisional applications, it is best to file divisional applications at the earliest opportunity, i.e. before or at the time of responding to the examination report for the parent application.
The serial filing of divisional applications is allowed in India as long as the filing is done before the parent application is granted. Once the parent application is granted, the applicant loses the right to voluntarily file divisional applications. However, a further divisional application can be filed in response to an objection for lack of unity during the examination of an earlier divisional application. Also, a couple of judicial precedents in India allow further dividing a divisional application, and support claiming of previously disclosed subject matter through divisional applications.
For instance, in National Institute of Immunology v the Assistant Controller of Patents and Designs (2015), the Intellectual Property Appellate Board (IPAB) cancelled the decision of the patent office refusing a further divisional application and held that the further divisional application filed out of an earlier divisional application was valid, provided the further divisional application was filed before the grant of the earlier divisional application and there were multiple inventions disclosed in the earlier divisional application.
Milliken & Company v Union of India (2016) was adjudicated on the same lines. In that case, Milliken filed a request for voluntary amendment of claims for the addition of new claims during the course of prosecution of an earlier divisional application. The patent office rejected the request for voluntary amendments for the addition of new claims. Milliken then filed a further divisional application to protect new claims. The further divisional application was rejected for being directed towards the same invention despite the objection to the first filed parent application for lack of unity. Accordingly, the IPAB upheld the validity of the further divisional application filed out of the earlier divisional application on the basis of lack of remedy to the applicant and contradictory stands adopted by the patent office during prosecution of different patent applications of the same family.
It is generally advisable to file all the divisional applications in India at the earliest opportunity, preferably before the grant of the parent application, to avoid unwanted complications. If that is not possible, perhaps for cost or business reasons, an applicant should at least consider including the claims meant for later divisional applications in an initial divisional application. In this way, the applicant might be able to pursue the desired claims through the initial divisional application subject to proving the presence of unity of invention.
If the patent office does not agree with the applicant’s assertion of the unity of invention in the initial divisional application, the office will raise an objection, calling to divide the initial divisional application. Such a direction will automatically provide an opportunity and more time to file a further divisional application.
While judicial precedents have brought much-desired clarity in the interpretation of the law governing divisional applications, the practice related to such applications is still evolving in India and will continue to do so with more and more jurisprudence pouring in.
Joginder Singh is an associate partner at LexOrbis.
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