Divisional Application

Pankaj Mohanta, an intern at Khurana and Khurana Advocates and IP Attorneys gives us an overview and analysis of divisional application.

BACKGROUND:

A divisional patent application is generally a fair basic patent application which differs from the parent application comprising of data, analysis, results and insights about a particular invention from a previously filed application. The object herein lies about balancing the mutual dependency over the insight driven analogies whilst retaining the identical time bound priority rights where it may still retain the parent application’s filing date.

Much care and attention has to be brought into serious consideration while bringing about a unity of invention while an application is being filed. The construction shall be effective enough to connect the dots so as to eliminate the chances of missing out such a scenario where the Invention’s unity is being inherently jeopardized. The plurality of inventions has been long an issue over the matter concerning divisional applications. There shall be only one application for a given invention, if not, then, there rises a need to file multiple applications in the form of divisionals each dedicated to hook exclusively one invention along with them respectively. If we scan a bit into the sole objective of doing so, we might come across a purposive reason behind such a rationale. It is often strikingly double binded where one of its prongs would represent the financial while the other prong would represent the administrative aspect of such a step. The applicant cannot escape the bunched and varied fees for several inventions by mere filing up one patent application, while closely related ones might be considered by the Controller.

The lack of unified invention, calls for filing divisional applications and is powered by the Article 4G of the Paris Convention.

OVERVIEW:

The applicant, who, here in this matter happen to be Bayer Animal Health GMBH had filed an application back then in the year 1999. This application was duly directed at the Delhi Patent Office bearing an application number – 1427/DEL/1999. Later, this application was retained as a divisional application of 371/DEL/1997.

The application was thoroughly checked and an FER was issued on 2nd day of July in the year 1999. Then, there existed a provision of Section 5 [1] [b] of the leading statute which implied that the claimed invention was not patentable under that provision. Well, scrutinizing a bit of the matter, we would certainly come across the fact that it was a pharmaceutical product having a chemical product base derivative. But, the representatives and the agents for the applicant did not respond back to the issued Office action, thereby rendering the application abandoned under Section 21 [1] as a resultant of non compliance.

Later, new radical changes were brought about in the form of fresh amendments where after being introduced into force enabled chemical substances to be patentable, seeing this, the appellants filed another application for that same invention as a divisional patent invention application of that of the parent or the earlier main application. The divisional application was examined and an FER was issued on the 20th of September, 2007 rendering that application invalid and which didn’t met the necessary criterias fulfilling the requirements of the Section 16 of the leading statute. This time, the appellants responded to this and in their response they stated that the Examiner did not interpret the provisions of Section 16 correctly. To this, another FER was issued based on the same objection on 8th October, 2008. Now, in this Office action, they did not miss out about expressly mentioning the fact that the applicant’s filed application could not be considered as a divisional since Section 16 as the provision per se, exclusively necessitated the need for having plurality of invention for filing such a divisional application.

The appellants thereafter requested for a hearing stating that their present applicant should not have been rejected under the current prevailing laws and provisions and so as the invention was not patentable under the law existing earlier, the original parent application couldn’t be proceeded further hence the present application shouldn’t be rejected, as stated by the appellants.

Their hearing was reviewed and after doing so, the Deputy Controller declined the contention of the applicants wherein they claimed to seek for filing a divisional application even if their parent application did not contain about multiple invention and their embodiments. To this matter, the Deputy Controller probed in and sketched out few findings relating to this case and they are:

  • Divisional Application, in absolute sense, is meant for multiple inventions
  • Disclosure which has been undertaken in one parent application
  • The priority of rights and claims are not specific to a particular invention matter
  • Claims in parent application are identical to that of the instant application
  • Claims in that parent application did not disclose more than one invention
  • Fresh application was filed as divisional to protect the same invention
  • The appellant could not restore the parent application which was not patentable then for the filing since the statute did not provide for that.

After the post amendment, the Controller General of Patents, Designs and Trademarks, he however addressed to all the head offices referring to the new changes bearing a message body which directed them as a communication meant for clarifying about any divisional application filed under the said provisions of Section 16 having claims of the priorities and rights which were not allowed under Section 5 of the then act before 01/01/2005 shall be allowed in accordance with the leading statute of the Patents Act, 1970 which remains firm as amended by the Patents [Amendment] Act, 2005. Not just this, but he also further directed that it shall be ensured that the divisional applications abandoned as per the instructions number – 3/2005 should be reviewed.

FACT BASED ANALYSIS:

There contains a double faceted aspect to this matter from which my analysis has been derived and based upon. The one that sets out instructions while the other stresses on the provisions of the law in the statute which has to do all about the divisional applications. Prior to 01/01/2005, the law provided that the applications having details in the form of disclosures, claims, priorities and rights which might have plurality of inventions while one of those multiple inventions in the application which may have related to a product which was not patentable under the earlier act can very well in the current scenario having the statute as amended, be processed as a divisional application which meets all the criterias which are provided for a proper grant. Also, it shall be taken care while deducing whether an application could be treated as a divisional. Meanwhile, mere re-filing and submitting the same claims and priorities that formed a part earlier in the parent application whilst attempting to make it seem like a divisional application would render that latter application standing invalid. Hence, regardless, Section 16 of Patents Act, 1970 still stands as the only slab according to which the application has to specifically satisfy the objective provisions that are enlisted  as conditions basing on which an application could be treated as a divisional patent application, provided it meets the requirements. Thus, the appellant here in this case who wished to have their application entertained as a divisional application at the Controller office with the priority date of that of their parent application, is largely non apparent on the face that it is impugned and leaves no room for it to be treated as  divisional for that matter to begin with.

CONCLUSION:

The technology dynamics and all its allied industries are undergoing through a state of continuous transformation in any given array of discipline in a linear progression and so does the statutes governing their regulation striving to streamline the compliance factor. The complexity in the patent regime over the Intellectual Property ecosystem carries the sole object to provide an unprecedented clarity in every possible corner while striking a balance for the interests of enhancing monetization, driving commercialization, securing better protectability and taking the pulse for innovation in a scale of continuum where they believe that things are necessary to pro activate as they navigate their journey to the future.

Leave a Reply

Categories

Archives

  • December 2024
  • November 2024
  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010