Category: India

Filing Divisional Application in India – Part 4

March 5, 2020

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.

Double patenting

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.   

Indian Government’s Proposal to Amend Patent Rules 2003 Will Impact Examination and Opposition Procedures

January 3, 2019

On December 4, 2018, India’s Department of Industrial Policy and Promotion, Ministry of Commerce and Industry published Draft Patent (Amendment) Rules, 2018 (Draft Rules) for comment.  These Draft Rules seek to amend the Patent Rules, 2003.  Key highlights of the of the Draft Rules include:

Encouraging Electronic Filing of Patent Cooperation Treaty (PCT) Applications by Indian Nationals

The Draft Rules propose to waive the transmittal fee required when a PCT application is filed electronically using e-PCT SAFE.  Currently, the transmittal fee for filing a PCT application electronically in the Indian Patent Office (IPO) is INR 16000 (approximately $US 230) for a large entity and INR 4200 (approximately $US 60) for individuals.  Waiver of this transmittal fee will reduce the overall costs of filing PCT applications at the IPO.

Additionally, India joined the World Intellectual Property Organization’s (WIPO) Digital Access Service (DAS) which allows priority and other relevant documents to be securely exchanged via electronic means between participating intellectual property offices worldwide.  The Draft Rules propose to waive the IPO’s fee of INR 5000 (approximately $US 71) to prepare and transmit certified copies of priority documents (e.g., Indian patent applications) though the DAS.   Waiver of this fee will benefit applicants who plan to file one or more PCT applications claiming priority from one or more Indian patent applications.

Further, the Draft Rules also provide that all PCT applications filed by registered patent agents must be filed on-line, by submission of scanned copies of the relevant documents.  Original documents, when required, must be submitted within 15 days from the date of the filing of the scanned copy.

Broadening the Availability of Expedited Examination

In the Patent Rules 2016, the Indian Government introduced expedited examination to speed up the patent process for two categories of applicants: (i) start-ups (including domestic (Indian) and foreign); and (ii) applicants choosing India as the International Searching Authority. In some instances, applications in which expedited examination was requested were examined and patents granted in as little as about 6 months (compared with 2 to 4 years under the normal examination process).

The Draft Rules further expand the categories of applicants that can request expedited examination to include:

  • Small entities (for Indian applicants, evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 is required; for a foreign entity, any document evidencing eligibility can be used);
  • Female applicants (applying either alone or jointly with other applicants, where all the other applicants are individuals (namely natural persons; it does not appear that a female applicant applying along with a corporate entity would be permitted);
  • Indian and foreign government undertakings (The Draft Rules do not define foreign government undertakings but indicate that foreign entities that are “similar” to Indian government undertakings are entitled to the benefits of this provision. Section 2(h) of the Patents Act, 1970, defines “Government undertaking” to mean any industrial undertaking carried on by a(n)  (a) department of the Government, or (b) corporation established by a Central, provincial or State Act, which is owned or controlled by the Government; or (c) Government company (which is a company in which not less than fifty-one percent of the paid up share capital is held by Central or State Governments, either singly or jointly, and includes subsidiaries of Government companies (per Section 617 of the Companies Act, 1956)); or (d) institution wholly or substantially financed by the Government (an institution is considered to be “substantially financed” by the Government if it receives a grant or loan of not less than INR twenty-five lakhs (about $US 35,000) and the grant or loan is not less than 75% of the total expenditure of that body or authority (per section 2(1)(h)(iv) of the Comptroller and Auditor-General’s (Duties, Powers and Conditions of Service) Act, 1971))); and
  • Applicants eligible for the patent prosecution highway (PPH) based on a mutual agreement between the IPO and the participating Patent Office.

Under the Draft Rules, an applicant must provide documentation demonstrating that it meets the requirements for expedited examination at any time before the First Examination Report is issued.  This is an important change over the current rule which provides that if an applicant does not provide the necessary documentation demonstrating that it meets the requirements for expedited examination at the time of the filing of the request, the application will be examined in the normal examination process.

Amendments to pre-grant opposition proceedings

Currently, pre-grant oppositions are handled by a single Controller.  Under the Draft Rules, pre-grant oppositions will be handled by a bench comprising two members.  Additionally, in the event that the two members of the bench have a difference of opinion on any issue, a third member can be added, and a majority decision rendered.  When such a situation arises, the third member will be nominated by the Controller.  This proposal to have a two or three member bench is significant because it reduces the subjectivity of opposition decisions and also increases the accountability of the members to each other as well as to applicants.

The comment period is open until January 3, 2019.

This post was written by Lisa Mueller.

USTR 2018 Special 301 Report – Priority Watch List Country – India

May 29, 2018

In April, the Office of the United States Trade Representative (USTR) released its 2018 Special 301 Report (the Report) identifying trading partners that do not adequately or effectively protect and enforce intellectual property (IP) rights or otherwise deny market access to U.S. innovators and creators that rely on protection of their IP rights.  The Report called on U.S. trading partners to address IP-related challenges with a special focus on the countries identified on the Watch List and Priority Watch List.

Countries identified on the Watch List are:

  • Barbados
  • Bolivia
  • Brazil
  • Costa Rica
  • Dominican Republic
  • Ecuador
  • Egypt
  • Greece
  • Guatemala
  • Jamaica
  • Lebanon
  • Mexico
  • Pakistan
  • Peru
  • Romania
  • Saudi Arabia
  • Switzerland
  • Tajikistan
  • Thailand
  • Turkey
  • Turkmenistan
  • United Arab Emirates
  • Uzbekistan
  • Vietnam

Countries identified on the Priority Watch List are:

  • Algeria
  • Argentina
  • Canada
  • Chile
  • China
  • Colombia
  • India
  • Indonesia
  • Kuwait
  • Russia
  • Ukraine
  • Venezuela

Priority Watch List Country – India

In this post, we will examine several of the USTR’s concerns relating to India which has been on the USTR’s Priority Watch list for decades.  Although the Report acknowledges that despite a number of recent administrative actions taken by the Indian government to try and improve its IP system, the country still has not addressed a number of key, longstanding deficiencies in its IP regime. Not surprisingly, the Report notes that India remains one of the world’s most challenging major economies with respect to the protection and enforcement of IP.

Some longstanding patent issues listed in the Report include:

  1. Narrow patentability standards;
  2. Threats of compulsory licensing and patent revocations;
  3. Overly broad criteria for issuing licenses and revocations under the India Patents Act;
  4. Costly and time-consuming patent opposition hurdles;
  5. Long time lines to receive a patent; and
  6. Excess reporting requirements.

Additionally, the Report further states that in the pharmaceutical and agricultural chemical sectors, India continues to lack an effective system for protecting against the unfair commercial use, as well as the unauthorized disclosure of undisclosed test and other data generated to obtain market approval for such products.  Another contentious area in the pharmaceutical sector involves Section 3(d) of the India Patents Act which provides that the discovery of a “new form” of a “known substance” that does not result in increased efficacy of that substance is not patentable.  This restriction on patent eligible subject matter poses significant obstacles to innovators seeking timely entry into the Indian market for these products.  Moreover, the Report further notes that India continues to lack an effective system for notifying interested parties of marketing approvals for follow-on pharmaceuticals in a sufficient manner that allows for the early resolution of any potential patent disputes.  Moreover, in 2017, the Indian Ministry of Health and Family Welfare created additional uncertainty in the pharmaceutical market when it issued a notification eliminating a requirement from Form 44 which required applicants seeking approval of a drug to declare the patent status of that drug to the regulator.

Other issues involve the pressure faced by innovative industries to localize the development and manufacture of their products due to high custom duties directed to IP-intensive products, such as medical devices, pharmaceuticals, ICT (information, communication, technology) products, solar energy equipment and capital goods.    With respect to agricultural biotechnology, the Report notes that the Ministry of Agriculture and Farmer’s Welfare’s “Licensing and Formats for Genetically-Modified Technology Agreement Guidelines, 2016” contained overly prescriptive terms that, if implemented, would undermine market incentives critical to the agricultural biotechnology and other innovative sectors.

With respect to IP enforcement, the Report notes that India’s overall efforts remain deficient.  Unfortunately, the lack of uniform progress across the country threatens to undercut the positive steps that certain states have taken.  In fact, a 2017 publication produced by the OECD and EU Intellectual Property Office entitled, “Mapping the Real Routes of Trade in Fake Goods,” reported that India was a key producer and exporter of counterfeit foodstuffs, pharmaceuticals, perfumes, cosmetics, textiles, footwear, electronics and electrical equipment, toys, games and sporting equipment. With respect to counterfeit pharmaceuticals, the 2017 publication found that 55 percent of the total value of global counterfeit pharmaceutical seizures originated in India – the largest of any country.  Additionally, the publication also noted that these counterfeit pharmaceuticals are shipped around the world with particular emphasis placed on the African countries, Europe and the U.S.

Not surprisingly, the Report also notes that the overall level of trademark counterfeiting in India also remains high.  Moreover, U.S. brand owners continue to report issues with respect to opposition and cancellation proceedings, as well significant challenges and excessive delays in obtaining trademarks and efficiently utilizing opposition and cancellation proceedings as well as issues with the quality of examination.  Moreover, uncertainty continues to exist for companies due to insufficient legal means to protect trade secrets in the country.

It appears that unless significant changes are made and strongly implemented by the Indian government to specifically address these above issues that the country will remain on the Priority Watch list for the foreseeable future.

This post was written by Lisa Mueller.