Divisional Application

11th January, 2013 - 1:57 pm Categories: IP Practice in India Patents 0 Comments

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 2^nd 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 20^th 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 8^th 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.