To File or Not to File? Divisional Applications in India

If applicants were permitted to file divisional applications with claims based on the disclosure of the parent application without such inventions being claimed in the parent, it will defeat the fundamental rule of patent law that 'what is not claimed is disclaimed'

While maintainability of divisional applications is a facile issue in several jurisdictions, the Indian law on divisional applications that is governed by Section 16 of the Patents Act, has some peculiarities that applicants should be mindful of to successfully prosecute such applications.

This article provides an overview of findings on cases that have been decided by the Delhi High Court and the erstwhile Intellectual Property Appellate Board (IPAB) on this issue. The earliest of these was the case of L.G Electronics v. The Controller of Patents & Designs & Ors. wherein the IPAB identified the following prerequisites for filing a divisional application:

i. A divisional application can be filed suo moto only if the parent application claims more than one invention that do not form a single inventive concept, or if the Controller raises an objection on disclosure of more than one invention.

ii. The divisional and parent applications cannot have overlapping claims.

iii. The divisional application cannot have any matter which is not disclosed in the parent application.

The IPAB further noted that Section 16 does not give an unqualified liberty to the applicant for suo moto filing of divisional applications and the existence of a plurality of inventions in the parent application is a sine qua non for filing divisional applications. It was opined that if applicants were given an unqualified liberty to file divisional applications, they would get the option of abandoning the parent application by not complying with the deadline for filing the reply to the first examination report and filing divisional applications thereby reviving the subject matter by extending the time for securing grant of the patent. The IPAB held that this was not the purpose of Section 16.

The existence of plurality of inventions as a sine qua non for filing divisional applications was reinforced by the IPAB in several cases. In UCB Pharma S.A v. Controller of Patents & Designs, the IPAB held that new claims obtained from the description that are not part of the parent claims cannot be permitted in the divisional application.

In Syntonix Pharmaceuticals, Inc. v. Controller of Patents & Designs and The Proctor and Gamble Company v. The Controller of Patents & Designs, the IPAB clarified that if the filing of a divisional application is necessitated by the objection of the Controller regarding multiplicity of inventions in the parent application, then the divisional application cannot be denied on the ground of lack of maintainability as the filing of a divisional application is the only remedy left with the applicant in such a situation.

On the issue of allowability of a divisional application filed out of an earlier divisional application, the IPAB held that there is no bar on filing a second divisional application out of a first divisional application if said filing is necessitated by an objection on multiplicity raised by the Controller on the claims of the first divisional application.

The IPAB enumerated the following requirements for filing divisional applications in Esco Corporation v. The Controller of Patents & Designs:

i. A divisional application can be filed suo moto or with a view to remedy the objection of the Controller on plurality of invention but in either case plurality of invention is the sine qua non for filing a divisional application.

ii. The claims of the divisional application should have a basis in the claims of the first mentioned application/parent application. The same applies to divisional of divisional applications whose claims should also find basis in the claims of the first mentioned/grandparent application.

iii. For division of an application, the parent application should not be deemed to be abandoned, withdrawn or refused. However, any action after the filing of the divisional application shall not have any bearing on the divisional application.

iv. The divisional application may be filed any time before the grant of the first mentioned application. However, in case of a requirement to file a divisional of a divisional application, the applicant shall not be left without any remedy.

v. The complete specification of the divisional application shall have the same disclosure as the complete specification of the first mentioned application.

vi. The divisional application cannot claim subject matter that was not claimed in the first mentioned application.

vii. The first examination report of the first mentioned application should identify the distinct groups of inventions to minimise the filing of divisional of divisional applications. If the first examination report clearly identifies more than two sets of claims, the applicant can file all divisional applications at once instead of awaiting the first examination report in the divisional case which may create unnecessary legal complications.

viii. The divisional applications shall be examined vis-à-vis the parent application and other divisional application(s), if any.

ix. If the objection on lack of unity of invention is taken in the first mentioned application, the divisional application should not be refused if the claims are statutorily allowable and the applicant is willing to amend the claims to remove any conflict.

The Delhi High Court recently adjudicated on the issue of whether divisional applications can be filed for claims that were not part of the claims of the parent application. Relying on Section 10(4) of the Patents Act which requires the complete specification to end with claims defining the scope of invention for which protection is sought, the Court held that since the invention resides in the claims, for the purpose of Section 16, unity/multiplicity of invention should be determined from the claims. Therefore, a divisional application filed with claims that were not part of the parent application's claims but are based on the disclosure of the parent application, cannot be permitted. If applicants were permitted to file divisional applications with claims based on the disclosure of the parent application without such inventions being claimed in the parent, it will defeat the fundamental rule of patent law that 'what is not claimed is disclaimed'.

In another decision of the Delhi High Court in relation to the maintainability of a divisional application, the Court permitted a divisional application based on the finding that the claims of the divisional were based on the claims of the parent application but had not been ranted therein.

While the patent law in India is still evolving, at present, it is prudent to be mindful of the foregoing conditions stipulated by case law to ensure the maintainability of divisional applications.

Disclaimer – The views expressed in this article are the personal views of the authors and are purely informative in nature.