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Divisional patents in India

By Ranjan Matthew   

Introduction
 
Divisional patent applications, as the name indicates, are those patent applications that have been divided from another patent application, also referred to as a parent application. Generally, when a patent application is examined and found to have more than one inventive concept, the examining authority may require the applicant of said patent application to file one or more divisional applications to segregate the individual inventive concepts therein.

Article 4G of the Paris Convention provides support to the practice of filing divisional patent applications and states that the applicant may file divisional applications if examination of the patent application reveals more than one invention in the original application for patent. This Article recognizes the right of the applicant in such cases, to benefit from the original priority date for all subsequent divisional applications filed [Article 4.G. (1) and (2) of the Paris Convention for the Protection of Industrial Property of 1883].

The Indian Outlook

Under the Patents Act, 1970 (“the Act”),  divisional patents are dealt with in Section 16 (1) which states:

16 (1) “A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.”

Prima facie, it can be inferred from a plain reading of the above provision that the applicant of the divisional application must be the same as the parent application. Moreover, in the Indian practice, while divisional applications are usually filed in response to examination reports which bring up an objection regarding lack of unity of invention, the statute also provides for filing of the divisional application by the applicant if he so desires.

The interpretation of the above statutory provision has been subject to dispute as can be seen in the decision issued by the Intellectual Property Rights Appellate Board (IPAB) in LG Electronics Inc. v. The Controller of Patents & Designs and others [Order No. 111/2011, IPAB].

In the above cited case, the IPAB provided welcome insight into the interpretation of Section 16 of the Act. The appellant, LG Electronics Inc., entered the national phase of its international patent application in 2004. The applicant then proceeded to file a divisional application one year hence, from the original patent application. The examiner raised certain technical objections at the time of examination for the divisional application, including the fact that the parent application was deemed to be abandoned under Section 21 of the Act due to the fact that the applicant did not respond to the examination report of the parent application within the prescribed time period, and that the parent application did not contain a plurality of inventions to give cause to the divisional application.    

In their response, the agent for the applicant argued that the word ‘or’ in Section 16 of the Act was to be interpreted as disjunctive in nature, thereby imparting a degree of discretion to the applicant, wherein the applicant could divide a patent application suo motu, i.e., of his own accord, even without direction by the Controller.    

The IPAB, while negating this argument  stated that the usage of the word ‘or’ was conjunctive in its aim, i.e., even if the applicant wished to divide the patent application suo motu, it would have to be primarily based on the fact that the application contains a plurality of inventions not linked by a single inventive concept.    

The IPAB stated that the purpose of Section 16 was to remedy an objection by the Controller with regard to a parent application containing more than one invention. Inter alia the IPAB also stated that in this case, the claims in the parent application were the same as what was claimed in the divisional application. This was in contravention to Section 16(3) of the Act which expressly states that the Controller may require amendment of either the parent application or the divisional application, such that neither includes subject matter claimed in the other.    

The IPAB opined that if the applicant was allowed to divide a patent application into divisional applications on his own without the existence of multiple inventions, then that would result in multiple examinations and re-examinations for essentially the same subject matter, which would hinder the patenting process and harm the society at large by depriving them of gaining access to the teachings of the patent in a timely manner. Moreover, this would introduce an element of uncertainty in the patenting process, whereby there would be no certain progression towards obtaining the patent. Lastly, if this was the case, applicants could freely extend the life of the patent by filing divisional applications thereof, and abandoning the parent applications, thereby disregarding or bypassing the timelines and guidelines set forth in the statute.    

Therefore, the IPAB set aside the above appeal and stated that the phrase ‘if he so desires’ in Section 16(1) of the Act is not unconditional, and does not give the applicant an unqualified liberty to file a divisional application even when there is no situation of plurality of distinct inventions contained in the parent application.    

Conclusion    

In closing, divisional patent applications can be filed before grant, in case there is an objection regarding unity of invention, or if the applicant would like to divide the application to claim a different invention than that claimed in the parent application. The patent office will not allow the erstwhile practice of re-filing rejected claims as a divisional application as a strategy to continue the examination process.

[The author is an Associate in IPR Division, Lakshmikumaran & Sridharan, New Delhi]
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