What qualifies for a Divisional Patent Application in India

As per Section 16 of the Indian Patents Act, if a Patent Application describes more than one inventive concept, then at the time of examination, examiner may require the Inventor/Applicant of the Patent Application (also referred as Parent Application) to divide the inventive concepts present in the Parent Application and to file one or more Divisional Patent Application(s). Also, Inventor/Applicant on his own can file Divisional Application any time before the grant of the Parent Application. Filing Divisional Application helps the Inventor/Applicant to file a new complete application, without losing the priority rights. The said provision of law has been succinctly defined in Section 16 of the Indian Patents Act, 1970 under the heading "power of Controller to make orders respecting division of application"

Recently few cases have been adjudicated upon by Intellectual Property Appellate Board (IPAB) with regard to qualification of Patent application as a divisional Patent application:

Bayer Animal Health Gmbh Vs. The Controller General Of Patents & Designs and others (Order no. No. 243 of 2012 IPAB)

In a recent judgment issued by IPAB in the above matter, the Divisional application filed by Bayer Animal Health GmbH was rejected due to the fact that the Divisional Application filed by the Applicant does not satisfy the test under Section 16 and hence cannot be entertained.

The Applicant Bayer Animal Health GmbH had filed an application for a pharmaceutical product with a chemical base in the year 1999, which was basically a Divisional Application derived from a Patent Application filed in the year 1997. The Parent Application was examined and the First Examination Report issued stated the invention was not patentable under section 5(1)(b) of the then existing Patents Act, 1970. Further, for not responding to the objections raised and failure to comply with the requirements made by examiner, the application was deemed to have been abandoned under Section 21(1) of the Act.

After the amendment of the Patents Act, 1970, product Patent regime was introduced in India. Pharmaceutical and chemical products became patentable subject matter. Bayer Animal Health GmbH filed a fresh application for the same invention as a Divisional Application of the earlier filed Parent Application. During examination, the present application was objected on the grounds that the application does not comply with the requirements of Section 16 of the Patents Act, 1970 and was held invalid under Section 16. Bayer Animal Health GmbH replied to the objections stating that the Examiner had not given a correct interpretation to the provisions of Section 16. However, the Applicant did not inform the Patent Office that the earlier filed Parent Application was deemed to have been abandoned under section 21(1) of the Act. The Application was again examined and objections were raised that the present application cannot be considered as a Divisional Application, as section 16 requires the Parent Application to contain more than one invention for filing a Divisional Application.

LG Electronics, Inc Vs. The Controller of Patents & Designs and others (Order no. No. 111 of 2011 IPAB).

In an earlier judgment issued by IPAB, the Divisional Application filed by LG Electronics was rejected on the ground that the said Divisional Application does not satisfy the requirements of Section 16.

In the said matter LG Electronics filed a National Phase application in the year 2004 and thereafter filed Divisional Application in the year 2005. In the Examination Report issued in the Divisional Application, the Examiner raised the substantive objection that the Parent Application is deemed to be abandoned due to the fact that Applicant did not respond to the Examination Report within the prescribed time period and further the Parent Application does not have plurality of the invention for which Divisional Patent Application can be filed.

Responding to the objection, LG Electronics put forth the argument that according to Section 16 of the Patents Act, 1970 the Applicant can file a Divisional Application any time before the grant of Patent if he so desires. Accordingly the Appellant is entitled to file a Divisional Application voluntarily even if parent application does not contain more than one invention.

In response to the arguments by LG Electronics, the IPAB observed that for filing the Divisional Application, the Parent Application should contain plurality of invention and should not be linked by single inventive concept; and, accordingly, the divisional application was rejected.

Based on the above decisions of the IPAB, it is recommended that the Inventor/Applicant filing Divisional Application suo motto should only file the Divisional Application if the claims of the Parent Application relate to more than one invention. Division of Parent Application only to circumvent the substantive objections during the examination proceedings of the Parent Application could be detrimental.

Disclaimer: The sole purpose of this article is for information only; and not to be construed for any legal advice. The article was drafted, based on the information considered upto 29thJanuary, 2013.