Qualification of filing a divisional application in India has always been a hot topic of debate among the peers, clients, associates and the Patent Office. This article aims to provide guidance on the criteria to file a divisional application in India. Therefore, the subject article answers some of the regular queries on the stand of the Indian Patent Office with respect to the validity of the divisional application.

  • What is divisional application as per the Indian Patent Act?

As per section 16(1) of the Indian Patents Act, an applicant may, at any time before the grant of a patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that claims of a complete specification relate to more than one invention, may divide the application and file further application(s) in respect of invention disclosed in the provisional or complete specification already filed. The said further application is called as divisional application.

  • When should divisional application be filed?

Divisional application can be filed at any time before the grant or refusal of the parent application.

  • Can an Applicant file a suo moto divisional application? If yes, what are the criteria to file a suo moto divisional application?

Yes, the Applicant can file a suo moto divisional application, if he believes that the parent application contains multiple inventions. The law regarding maintainability of the divisional application with respect to voluntary filing of the divisional applications is laid down by the erstwhile Intellectual Property Appellate Board (IPAB) in LG Electronics Vs Controller of Patents vide Order No:. 111/2011. The said order is issued in the matter of the Application No.1191/KOL/2005, which held the following:

a)The Applicant can file one or more divisional application if the invention disclosed in one patent application do not relate to a single invention or to a group of inventions forming a single inventive concept and

b) Divisional application should not include any claim already claimed in the parent application (to avoid double patenting). It implies that the claims of the divisional application should not be identical in nature with claims of the parent application. However, claims of such application should be divided out of claims of the parent application and should fall within the scope of initially filed claims. The onus of proving the validity of the divisional application lies with the Applicant.

  • Is divisional application in India same as continuation/continuation-in part application of US?

No, divisional application is not same as continuation/continuation-in part application of US. In the US, claims of the continuation applications are based on the disclosure of the specification. However, in India, claims of the divisional application should strictly be based on the original claims of the present application. Further, continuation-in part application of the US is patent of addition application of India.

  • Is the lack of unity of invention objection is same as restriction requirement of US to file a divisional application?

No, the restriction requirement in US is not same as the unity of invention. When different inventions or embodiments are encompassed by the claims, an examiner may issue a restriction requirement for the applicant to choose which one to pursue. The rationale is that examining several different inventions and features places an undue burden on the examiner. However, unity of invention objection is raised when the Controller of Indian Patent Office believes that claims of a complete specification do not relate to a single invention or to a group of inventions so linked to form a single inventive concept.

  • What can be claimed in divisional application? Can the applicant add a new subject matter in claims or in the specification while filing a divisional application?

If claims of the parent application relate to multiple inventions, then such claims can be divided out and can be filed in subsequent application. Such subsequent application is a divisional application. Claims of the divisional application should fall within the scope of the initial filed claims of the parent application and should not be identical with claims of the parent application. The Applicant cannot add any matter in claims of the divisional application that is falling outside the scope of initially filed claims of the parent application.

  • What is the "ante dating"?

The concept of "ante dating" implies that the date of priority of the divisional application shall be same as that of the parent application.

  • What is the term granted to a divisional patent?

It is to be noted that the term of the patent granted on a divisional application is 20 years from the date of the filing of the parent patent application.

  • When does patent office examine the divisional application?

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.

  • Whether a divisional of a divisional application (grandson divisional application) is allowed?

The validity of "grandson" divisional application came up for discussion in the case of Esco Corporation v. The Controller of Patents & Designs. This judgement was delivered last year where the erstwhile IPAB ruled that the filing of a divisional application arising out of a divisional application is allowable, provided that

  • the claims of the divisional of divisional find its roots in the claims of the parent application;
  • the divisional of divisional may be filed to remedy the objections raised by the controller/examiner in the examination report;
  • Needless to mention, the divisional of a divisional application is subject to other conditions, such as presence of multiplicity of inventions and pendency of the first divisional application.

Thus, this order clarifies that a divisional of a divisional application (grandson divisional application) may be allowed subject to the above conditions particularly when the divisional of a divisional application is filed to remedy the objections raised by the controller/examiner in the examination report. However, the order does not very clearly set out whether divisional of divisional would be allowed if the applicant files that application of his own (suo moto).In cases where the applicant files divisional of divisional of his own, it would be left to the discretion of the controller to allow/disallow such application as there is no clear guidance on the issue.

Conclusion

The purpose behind this article is to provide guidance to the Applicant(s) of national and foreign jurisdictions regarding the criteria to file divisional application and to provide them with right directions while making a decision to file a divisional application. Therefore, while keeping the above mentioned in mind, one can take the right decision to file divisional patent applications as per the Indian Patent Practice and can aid in smooth prosecution of the patent applications.

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.