Every patent application in India should be based on a "single invention notion" (and hence be considered "one invention"). A divisional application is filed when a parent application contains numerous groups of ideas that do not comprise a "single invention notion." As the various rulings continue, divisional patent applications, or simply divisional applications, have become a point of contention in India. A patent is a sort of Intellectual Property Right (IPR) that grants the owner exclusive rights to his invention, allowing no one else to create or use it for a set length of time. The Article 4G Paris Convention recognizes such applications globally, while the Patents Act, 1970 recognizes them in India. It's a big deal if a patent application has a lot of different inventions in it and the parent application isn't cohesive.

^{[Image Source: gettyimages]}

What is a Divisional Patent Application?

A divisional application or divisional patent application is filed following the patent application because of the various inventions listed in the patent application. This divisional application protects each of the inventor's various inventions separately. The objections to the patent report are also settled more effectively this way. This safeguards the inventor's rights. When you file an application that mentions several inventions, the application will lack structure and unity. Separate applications must be filed in this scenario, each containing inventions other than the first one described.The original application will take on the role of parent application. The divisional applications are treated as though they were filed at the same time as the parent petitions, and thus receive the same filing date. They are also entitled to the same level of priority.

Indian Legal Framework

The legislative basis for filing divisional petitions is Section 16(1) of the Patents Act of 1970 ('Act'). When the parent application contains a number of separate inventions, divisional applications may be filed, according to Section 16 of Patents Act of 1970  . It's worth mentioning that, according to Section 10(5), a complete specification's claims must refer to a single invention or a collection of related innovations arising from a single inventive concept. As a result, filing a divisional application requires the presence of two separate inventions in one application. Furthermore, Section 16(3) of the Act states that none of the entire specifications (i.e., the patent and divisional applications) should contain claims for any matter asserted in the other application. As a result, in India, a divisional application to pursue comparable claims, that is, claims based on the same creative concept, is not permitted. Because of this need, the law governing divisional applications differs from that of the United States and the European Union.

Cases

The Intellectual Property Appellate Board ('IPAB') has clarified and interpreted the laws relating to divisional applications.

The existence of a plurality of invention in the patent application is a sine qua non for a divisional application, whether filed suomoto by the applicant or to remedy the Controller's objection, according to the first case law on divisional applications.In this case, the IPAB's decision in L.G. Electronics v. Controller of Patents (2011) settled the question of whether an applicant's filing of a divisional application, if he so desires, can be interpreted to mean that an applicant can file a divisional application on his own, even if the claims in the specifications relate to only one invention.

While it was clarified that the interpretation of 'if he so desires' is conditional on the parent application containing more than one distinct invention, other issues relating to divisional applications, such as: (i) whether claims of a divisional application can be based on the disclosure of the parent application or must they be based on the claims of the patent application; (ii) whether a divisional of divisional is allowable; and (iii) whether a divisional of divisional is allowable and (iii) how to assess if the claims of a complete specification relate to distinct inventions, i.e., lacks unity of invention, remained unclear. However, subsequent IPAB orders have recently adjudicated on matters relevant to the admissibility of divisional applications, shedding some light on some of the difficulties mentioned here.

The IPAB's recent decisions in the cases of Procter & Gamble Company v. The Controller of Patents & Designs (2020), Esco Corporation v. The Controller of Patents & Designs (2020), and UCB Pharma S.A. v. The Controller of Patents & Designs (2020) leave little doubt as to whether claims of a divisional application can be based on the disclosure of the parent application or must be part of the subject matter claimed in the parent application.

According to the IPAB, a patent application can only be separated if it claims more than "one invention." "A plain reading of sub-section (1) of section 16 indicates that the very foundation for accepting a divisional application is "on the assumption that the claims of the whole specification relate to more than one invention," the IPAB reasoned. "More than one invention" is defined in Section 10(5) as "any innovation or combination of inventions that cannot be combined to form a single inventive notion."The Appellate Board reiterated that claims of divisional applications must be based on claims of the parent and not its disclosure/specification, rejecting the argument that certain new claim(s) can be allowed that were never part of the originally filed claims. As a result, it is held that the divisional application's claims are rooted in the parent application's claims. The IPAB further underlined, using the L.G. Electronics case, that the divisional application should not include the identical set of claims as the original application.

Similar positions were also undertaken by the IPAB in the cases of Procter & Gamble Company v. The Controller of Patents & Designs (OA/47/2020/PT/DEL) and National Institute of Immunology v. The Assistant Controller of Patents & Designs (OA/21/2011/PT/DEL).

In addition, the IPAB supports the filing of fewer cascading divisional applications. This, in our opinion, can only be accomplished if the IPAB identifies all of the unique inventions in the First Examination Report whenever a parent application lacks "unity of invention." The Applicant can then file all divisional petitions at once if there are multiple sets of separate claims.

Also, as previously stated, if the office raises a "unity of invention" objection, the Applicant shall be given the opportunity to take remedial action by filing a divisional application to overcome the issue.In light of the legislative restrictions in the Patent Act, the Controller assessing the application should not dismiss the divisional application totally and should allow the Applicant to make revisions to the application.

Conclusion

The current method for controllers to determine whether the claims of a divisional application have their origins in the parent application is to compare terms, which is ineffective. There is a need for improvement in this area, and it will be interesting to see how things develop in future cases. There has also been a lot of doubt regarding divisional application claims, such as whether they must be claimed in patent application, divisional of divisional application (which lacks a precise interpretation), and accessing lack of unity. It's encouraging to see IPAB taking steps to ensure that divisional applications are handled consistently. We can expect a more consistent approach from both the Applicants and the Registry for the filing and prosecution of divisional applications in the near future if these guiding principles are followed.

Author: Anuja Saraswat - a student of NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back us at support@globalpatentfiling.com or Global Patent Filing.