UNCERTAINTY OVER FILING A DIVISIONAL APPLICATION IN INDIA
Divisional applications have been a contentious issue before the Indian Patent Office over the years. In other major patent offices such as the EPO, USPTO, etc. the right to file a divisional application is available if the subject matter disclosed in an application includes more than one invention. The Indian Patent Office does not quite follow the same doctrine governing the right to file a divisional application.
Section 16(1) of the Indian Patents Act, which governs "Divisional Application" is quoted below: (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.
Section 16(1) states that the Applicant may voluntarily file a divisional application for an invention disclosed in the specification. The recent court orders have settled the matter decisively as to what constitutes “invention disclosed in the … specification”.
The manual published on 26 November 2019, indicates that voluntary divisional applications as well as divisional applications in response to Unity of Invention objections can be filed only when the claims of the complete specification relate to more than one invention. (paragraph 06.01.01 (i) of manual).
Further, in the order dated 27 October 2020 passed in appeal No. OA/3/2015/PT/MUM the erstwhile Intellectual Property Appellate Board (IPAB) upheld the refusal of divisional application quoting above provisions of the manual. Refer paragraphs 10.11 & 10.14 of the order.
In another Order dated 27 October 2020 passed in Appeal No. OA/66/2020/PT/DEL the IPAB has held as follows:
10. Therefore, looking at the provisions of law and the settled practices, we reach the following conclusions that a patent application can only be divided, if it claims more than ‘one invention’.
In a recent order issued by Hon’ble Delhi High Court on the issue of "Divisional Application" the above position of IPAB has been affirmed that no divisional application can be filed based on disclosed, but unclaimed subject matter, even if the disclosed, unclaimed subject matter relates to an invention ‘distinct’ from the invention claimed in parent claims.
The rationale behind these decisions is based on the axiom, “what is not claimed is disclaimed”. However, it is debatable if this axiom holds true only after the patent is granted or even prior to grant of patent where the claim boundaries have not yet become crystallized.
The foregoing decision from the Delhi High Court, will now hold precedence while prosecuting - divisional applications in India, unless it is overturned by a higher forum. Considering these developments, it is anyone’s guess as to the fate of numerous divisional applications that are now at various stages of examination before the Indian Patent Office.
Keeping in consideration the circumscribed prospects with divisional filings in India, the best practice to be considered at an embryonic stage i.e. while drafting the application, is to ensure that the first application (or the PCT application as the case may be) has duly claimed all embodiments of the invention entailing protection. Ensuring adequate coverage vide multiple fall-back claims would allow an Applicant pursue divisional options at a later stage. Also, in an application all category of claims may be included such as method, system, composition and apparatus claim(s) bearing in mind the unique patentability related essentialities under the Indian Patent Law.
Prior to National phase entry, it is suggested, if feasible, to add new claims under PCT Article 19/34, such that the application when nationalized in India is better placed to navigate the unique legal requirements under the Indian Patent Law.
The most recent decision of the Hon’ble DHC has restricted the Applicant’s options to file a divisional application. Moreover, India does not have the option of filing a continuation application, as in the US, where a new patent application can be filed with claims not previously pursued but based upon the original description and priority date of the first application. Therefore, at the moment at least, there is no recourse to pursue claims that were not claimed in the first application.
The Indian Patent law with regard to divisional applications should evolve to be harmonious with the laws of major patent offices in order to protect the interests and rights of the applicant.
- Boehringer Ingelheim ... vs The Controller Of Patents & Anr. on 12 July, 2022 https://indiankanoon.org/doc/164938320/
- Preeti Sharma