This is the eighth 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 seven posts examining divisional practice in Brazil, Mexico, China, India, Argentina, Canada, and Thailand and can be found here: Divisional Practice – Brazil, Divisional Practice – Mexico, Divisional Practice – China and Divisional Practice – India, Divisional Practice – Argentina, Divisional Practice – Canada, and Divisional Practice -Thailand.
Time Periods for filing a Divisional Application
Section 13(3) of the Pakistani Patents Ordinance, 2000 (2000 Ordinance) provides that “each application shall relate to one invention only”. Section 13(4) further states that “the Applicant may, before the acceptance of the application, divide it into two or more applications, provided that each divisional shall not go beyond the disclosure in the first application”. By stating that “each application shall relate to one invention only”, Section 13(3) allows an Examiner to require an Applicant who is trying to protect two (or more) inventions in a single (e.g., one) application to restrict its application to a single single invention and make the second (or more) invention(s) the subject of a divisional application (e.g., a compulsory divisional application). Alternatively, section 13(4) gives an Applicant the right to divide its first/parent application into one or more (divisional) applications if the Applicant believes that its claims cover more than one invention (e.g., a voluntary divisional application).
According to section 13(4), the time period for filing a divisional application is “any time until the first/parent application has not proceeded to acceptance”. Thus, the implication is that once a parent application has been accepted, the opportunity to file a divisional application has expired.
Absent definite period for acceptance, a divisional may be kept pending up to the maximum life of a patent
As mentioned previously, according to section 13(4), an Applicant can file a divisional application “any time before acceptance of the first/parent application”. However, section 13(4) is silent regarding when (e.g., the time period) an application must be accepted. Specifically, this section of the 2000 Ordinance does not explicitly require or imply that a divisional application must be placed in order of acceptance at the same time as a parent application. As a result, an Applicant can keep a divisional application pending in Pakistan for the term of 20 years.
Lack of unity (e.g., non-unity) is not a ground to invalidate a patent post-grant
The question of whether an application claims more than one invention is considered by an Examiner during the substantive examination stage of an application. Although section 15(4) of the 2000 Ordinance requires that the claim(s) of a complete specification relate to only a single invention, section 13(6) provides that “the fact that a patent has been granted on an application that did not comply with the requirement of unity of invention is not a ground for invalidation of the patent”. In other words, if an application containing claims to two or more inventions ultimately proceeds to grant, the resulting patent cannot be later challenged as invalid based on a lack of unity.
Additionally, section 44(1) stipulates that “[N]o amendment of specification shall be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment”. This section suggests that similar to pre-grant amendments, any post-grant amendments are subject to examination for unity/added matter. However, if after this examination, the Examiner allows the amendment or is convinced by the Patentee’s arguments and withdraws the unity objection, the allowed or approved amendments cannot be called in question after advertisement and expiry of the opposition period except on the ground of fraud. It is for this reason that the grounds of opposition and revocation (e.g., belated opposition) in the 2000 Ordinance do not include a ground based on lack of unity against the original specification.
Divisional applications containing subject matter that exceeds beyond the contents of its parent application are not allowed
The proviso to section 13(4) of the 2000 Ordinance requires that a divisional application be based on the subject matter disclosed in a parent application. This implies that the contents of a divisional application must not exceed the contents of its parent application either as originally filed or amended (e.g., such as for the purpose of correcting an obvious mistake or otherwise subsequent to the filing [Sec. 44(1)]). However, when this proviso is read in conjunction with the provision of section 23(1), it is clear that a divisional application that contains subject matter that exceeds the scope of disclosure of a (complete) specification as originally filed in the parent application, may be the subject of a pre-grant opposition or revocation (e.g., belated opposition). Therefore, although a lack of unity (e.g., non-unity) is not considered to be a ground of invalidation, either pre-grant or post-acceptance, a divisional application having a claim that is broader in scope than that disclosed in its parent application will not be allowed to proceed unless its specification is amended to exclude the new/added subject matter (section 42(5)).
Use of “cascading divisionals” to overcome lack of unity (e.g., non-unity) objections
As mentioned previously, section 13(4) of the 2000 Ordinance allows an Applicant to voluntarily divide its application into two or more divisional applications. It is important to note that each of the two or more divisional applications must originate from the very first parent application filed. However, because each divisional application is considered to constitute an independent application that is the subject of substantive examination, if a lack of unity (e.g., non-unity) is found to exist in a divisional application, the filing of a subsequent divisional (e.g., a divisional off of a divisional), is permitted. Thereupon, an Applicant may have a series of divisional applications (e.g., “cascading divisionals”) on its immediate or second parent application.
Right to file further divisionals is prohibited once the first parent application is accepted
According to section 13(4), the right to file two or more divisional applications is permitted up until the acceptance of the parent application. Thus, once the parent application has been accepted, the filing of subsequent divisional applications is no longer permitted. For example, assume a specification discloses four inventions and the Applicant has decided to pursue three inventions in a single divisional application before acceptance of the parent application. Once the parent application is accepted, the Applicant may not be able to file a further divisional application. Therefore, the filing of any divisional applications from a parent application or any divisional application filed from the parent (e.g., a cascading divisional), must be filed before the acceptance of the first parent application. Failure to file any such divisionals within this time period may result in abandonment/loss of any unclaimed inventions.
The existence of “technical inter-relationships” among various groups of inventions may avoid the need to file a divisional application
The statutory requirement that “each application shall relate to one invention only” indirectly connotes that two inventions cannot be claimed in a single (e.g., one) application. However, the question of what constitutes a “single invention” is a question of fact that is typically decided by the Controller of Patents. For example, in an application relating to a device, a claim to an overall device, and separate claims for parts that constitute its assembly may be considered one invention, but if the parts have other applications or characteristics that provide a solution to another problem which is not envisaged by the former, a lack of unity issue may arise. Likewise, with respect to chemical inventions a claim to an intermediate (I) together with a claim to compound (A) per se and a process claim for the manufacturing of compound (A) using said intermediate may be retained in a single application provided that a technical inter-relationship exists between the intermediate and the final product. Such inter-relationship may be established if the intermediate contributes to the essential structural feature of the final product.
In contrast to applications claiming mechanical inventions, the 2000 Ordinance provides the standard for determining unity for applications claiming chemical products intended for use in agriculture or medicine. Specifically, the first part of section 15(8) states that “claim or claims in respect of a complete specification of a chemical product intended for use in agriculture or medicine shall be structurally defined and shall relate to a single chemical product only excluding its derivatives and salts, each of which, with a material or a novel improvement in its claim from the main product, shall be filed a separate invention or where applicable, as a divisional application”. Without conceding to the statutory basis excluding derivatives and salts from the scope of claims directed to compounds per se, it is clear according to section 15(8) that any derivatives and salts of a claimed compound that are pursued in a separate or divisional application must show an activity that is substantially improved or enhanced compared to the compound (in free base form). A voluntary divisional covering derivatives or salts having activity in common with the compound (in free base or in congruity (1:1 ratio) with the compound) run the risk of being rejected or invalidated on the grounds of one or more of lack of subject matter, double patenting, insufficiency of disclosure, etc.
Divisional applications attempted to achieve a post-filing broadening of the claims is not allowed
As discussed previously herein, a divisional application (e.g., voluntary or compulsory) can be filed to protect a second or another invention. However, a divisional application that seeks to broaden the scope of the claimed invention will likely be refused. For example, if a parent application discloses a composition comprising a combination of compound A and compound B using water as a solvent, a divisional application covering the same composition (compound A and compound B) claiming the same activity for the composition but using non-aqueous solvent would be considered to be impermissible broadening and would not be allowable. The caveat to this is provided in section 15(5) which states: “[S]ubject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a Convention application, may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a Convention country, being developments or additions in respect of which the applicant would be entitled under the provisions of section 11 to make a separate application for a patent”. In other words, according to this section, if an Applicant files a priority application claiming an invention and identifies additional improvements relating to the invention during the priority year, the Applicant can include those improvements in its specification when filing its original (e.g., Convention) application in Pakistan (remembering that Pakistan is not a PCT member country). However, if the Applicant identifies additional improvements after both the priority year and the filing of its application in Pakistan, then those additional improvements cannot be included and/or claimed in the already filed application (i.e., any attempt to add those additional improvements will be rejected if the Applicant tries to add them by way of one or amendments to the original specification). Under these circumstances, the Applicant will need to consider whether to file for a Patent of Addition.
In summary, a divisional application can be filed in Pakistan when an Examiner raises a lack of unity of invention rejection during examination. Additionally, a voluntary divisional can be filed by an Applicant at any time prior to grant of a parent application in order to extend prosecution until the commercial value and/or likelihood of success of an innovative product is fully appreciated or realized. This ability to extend prosecution of such a divisional application is particularly helpful for pharmaceutical and biotechnology inventions where the full commercial value or likelihood of success of such products may not be realized until many years after filing.
This post was written by Lisa Mueller and Naeema Sadaf of PakPat World Intellectual Property Protection Services