This is the fourth post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, and Vietnam (in no particular order). Our first three posts examined divisional practice in Brazil, Mexico, and China can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico and Divisional Practice – China.
Filing Divisionals in India
Like many other countries that are part of the Paris Convention, India also allows for the filing of divisional applications. The filing of a divisional application is specified under section 16 of the Indian Patent Act of 1970 as amended in 2005 (“the Act”) under the heading “Power of Controller to make orders respecting division of application”. The Indian Patent Office (IPO) allows for the filing of a divisional application, also referred as a “further application”, if the application is filed in a timely manner with claims directed to a distinct invention (e.g., such as in response to a lack of unity of invention objection).
Time Period for Filing Divisional Application
Section 16(1) of the Act allows the filing of a divisional application:
- Anytime before the grant of the parent application; or
- Within 6 months (which is extendible by 12 months) from the date of a first examination report containing a lack of unity of invention objection raised by an Examiner.
A divisional application can be filed at any time before the statutory or voluntary abandonment of a parent application. However, unlike several other patent offices, the IPO does not issue a notice of allowance when an application is allowed. Thus, a direct grant or grant after receipt of a first examination report may result in the loss of an opportunity to file a divisional application. Since there is no window of time available after grant and before paying the grant fee to file a voluntary divisional application, it is best practice to file a divisional, if desired, at the earliest opportunity.
Divisional Applications filed in Response to a Lack of Unity of Invention Objection
If the IPO identifies multiple inventions and raises a lack of unity of invention objection in a first examination report in a parent application, such objection can be overcome by either responding to the lack of unity of invention objection or by electing a (e.g., one) group of claims and pursuing the non-elected groups in one or more divisional applications.
As recited in section 16 and as discussed in multiple court decisions, when filing a voluntary divisional or a divisional in response to a lack of unity of invention objection, the existence of multiple inventions is a fundamental requirement. This is emphasized in sections 16(2) and 16(3) of the Act which recite the following requirements for such divisional applications, namely that:
- Subject matter not disclosed in substance in a parent application should not be included in a divisional application (section 16(2)); and
- A divisional application or a further application should not include claims that overlap with the subject matter claimed in the parent application (section 16(3)).
Claims of a Divisional Application and Double Patenting
As mentioned above, sections 16(2) and 16(3) stipulate that a divisional application must not (1) include any subject matter not disclosed in substance in the parent application; and (2) contain claims that overlap with the subject matter claimed in the parent application. The phrase “in substance” is interpreted to mean “any subject matter which is encompassed by the scope of the parent application”. Additionally, in the order issued by the Intellectual Property Appellate Board (IPAB) in the decision, LG Electronics Inc. v. The Controller of Patents & Designs and others [Order No. 111/2011, IPAB] relating to the filing of a voluntary divisional application, the IPAB stated that section 16(3) of the Act requires the Controller to (1) ensure that the claims of a parent and divisional application do not have the same scope; and (2) require that amendments be made to the claims in situations where the scope of the claims is identical. Readers should note that the Act contains provisions for filing a patent of addition for “new matter” or improvements under section 54.
Similar to the patent laws in many other countries, section 7(1) of the Act recites that every application for a patent is only for a single (e.g., one) invention while section 46(2) recites that a patent is granted only for a single (e.g., one) invention. As a result of these two sections, section 16(3) requires that the claims of a parent and any further divisionals contain non-overlapping subject matter. As discussed previously, this section expressly states that the Controller may require amendment of either the parent application or the divisional application to ensure that neither contains subject matter claimed in the other.
Requirements for Filing a Divisional Application
When filing a divisional application, the following must be submitted to the IPO:
1. Copy of the specification and drawings (Form 2);
2. Application for grant of patent (Form 1), statement and undertaking (Form 3) and inventorship (Form 5);
3. Power of attorney (can be submitted within 3 months of the date of filing); and
4. Request for examination on Form 18 (which can be filed at any time after the start of examination of the parent application).
A divisional application should also include a cross-reference to the parent application. If any amendments are required to the specification or any document related thereto, these should be made pursuant to the statutory provisions in section 57 of the Act on Form 13.
Examination and Publication of Divisional Applications
In India, a divisional application is published with its own distinct application number along with a reference to the parent application.
With respect to examination, Rule 24 B (iv) of the Patent Rules, 2003 provides the time limit for filing a request for examination of a further (e.g., divisional) application. According to this rule, a request for such examination should be made:
(1) within 48 months from the filing date of the application or priority date of the earliest (first) filed application; or
(2) within 6 months from the filing date of the further (e.g., divisional) application,
whichever is later.
Additionally, according to Rule 24 B (2)(i), early publication and expedited (e.g., out of turn) examination is available for a further (e.g. divisional) application. According to this provision, a divisional application filed under this section will be examined in the same order as a pending parent application. Therefore, a request for examination should be filed along with the divisional application when a parent application is already in the process of being examined. In these circumstances, the divisional application will be published within 1 month from the date of filing and will be examined within 1 month from the date of publication.
Looking Ahead: Potential New Changes to Divisional Applications
While multiple opinions from Indian courts and IPAB have provided some clarity on the interpretation of section 16 and other sections related to the filing of the divisional applications, the practice is still evolving. For example, it is still not clear whether an Applicant can file a divisional application for inventions that were disclosed in the parent application, but not claimed, as section 16 is not clear on this point and the courts have not expressed an opinion on this issue.
Another contested issue is how much distinction should exist between the claims of the parent application and a voluntary divisional at the time of filing of the divisional application. Although the IPAB has expressly stated that a voluntary divisional application must primarily be based on an application containing a plurality of inventions that are not linked by a single inventive concept, this distinction is somewhat murky. Moreover, the courts have made it very clear that an Applicant cannot file the same claims in a parent application in a divisional application in order to continue (or delay) examination of the parent application. Although not explicitly mentioned in any IPAB decisions, it can be inferred that trivial amendments to the claims of a patent application may not provide enough of a distinction for purposes of filing a divisional application unless the claims of the divisional application cover subject matter that is substantially different from that of the parent application.
Please continue to watch BRICS & Beyond for updates on divisional applications in India.
This post was written by Lisa Mueller and Swetha Maladkar, Indian Patent Attorney.