Priority date is imperative to claims of a patent application because knowledge or information available in the public domain before the priority date is taken into consideration while determining whether the claim(s) are entitled to be granted or rejected. Delay in securing the priority date may lead to addition of more information or knowledge to the public domain, which may adversely affect possibility of a patent grant. The approach applied by the patent office in India to assign priority date to claims is discussed in this article.
Determining priority date
A complete patent application may include one or more claims, and each and every claim of the patent application is assigned a priority date. In other words, different claims in a patent application can have different priority date.
In case a complete patent application is claiming priority from a previously filed provisional patent application, and if a claim of the complete patent application based on the subject matter disclosed in the provisional patent application, then the priority date of the claim will be the filing date of the provisional patent application.
The law in India allows an application filed as a complete patent application to be considered as a provisional patent application, if a request is made within 12 months of filing the above referred complete patent application. A subsequent complete patent application that is filed by claiming priority from such a provisional patent application can have a claim based on the subject matter disclosed in above referred provisional patent application. In such as scenario the claim’s priority date will be the filing date of the provisional patent application (which was filed as a complete patent application earlier).
A complete patent application may be filed by claiming priority from two or more provisional applications. In case a claim in such a complete patent application is based on the subject matter disclosed in one of those provisional patent applications, then the priority date of the claim will be the filing date of the provisional patent application in which the subject matter is disclosed.
On the other hand, if a claim in such a complete patent application is based on the subject matter disclosed in parts in multiple provisional patent applications, then the priority date of the claim will be the filing date of the provisional patent application that was last filed.
A complete patent application may be filed within 12 months of a previously filed application in India, and claim priority from the same. In case a claim in such a complete patent application is based on the subject matter of the previously filed application, then the priority date of the claim will be the filing date of the previously filed application.
A claim in a divisional patent application will have its priority date as the filing date of an earlier application (provisional(s) or complete from which the divisional application originated) in which the subject matter on which the claim is based on is first disclosed.
A complete patent application filed in India may claim priority from one or more applications filed in a convention country. A claim in such a complete patent application will have the priority date as the filing date of the application in the convention country in which the subject matter on which the claim is based on was first disclosed.
Priority date of a claim has a bearing on what can be considered as prior art to a claim in a patent application. The points discussed above provide an overview of how priority date is determined in different scenarios. Hence, claims should be drafted in such a way that an earliest priority date is established, while also considering the scope of protection desired, especially when a complete patent application claims priority from multiple patent applications.
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On several occasions, multiple inventions are covered by a single patent application. Inclusion of multiple inventions, which may be related to each other, in a single patent application, may be done for strategic reasons. However, the patent law in most countries allows claiming a single invention or a single inventive concept in an application.
One of the important aspects of a patent application is that, it should have “unity of invention” i.e. a single patent application should claim only one invention. In case a patent application claims more than one invention, then the patent application may get rejected during examination on the ground of lacking unity of invention. Such rejection can be overcome by amending the patent application (can be referred to as “parent application”) to claim a single invention. The additional inventions that were previously claimed or covered by the patent application can be claimed by filing “divisional application(s)”. Apart from filing a divisional application as a remedy to a rejection by a patent examiner, a divisional application can be filed voluntarily by the applicant.
A divisional application allows an applicant to divide one of the inventions from the parent application into a new complete application without losing his priority rights. Term of the divisional application is 20 years from the date of filing of the parent application.
A divisional application is considered as a substantive application, and therefore separate fee has to be paid for its filing. Further, as it is examined separately, a request for examination must be made. A divisional application should be accompanied by a complete specification and should not include any matter not in substance disclosed in the parent application. Further, the divisional application should not include a claim for any matter that is claimed in the parent application or any other divisional application (L.G Electronics, Inc, Korean Corporation Vs. The Controller of Patents & Designs et. al.). It shall be noted that a divisional application can be filed at any time before the grant of the patent, and one must be the applicant of the parent application to file a divisional application.
In some jurisdictions, a divisional application may arise from another divisional application. However, in India, all divisional application should arise from the parent application and should be filed before the grant of the patent application.
Including subject matter related to multiple related inventive concepts in a single patent application can be a good strategy in some scenarios. Such a strategy may help a patent applicant in postponing the expenses involved in filing the patent application. Further, the applicant, depending on the market feasibility of the inventive concepts can choose how the patent application can be divided into one or more divisional applications. However, an attempt to use provisions relating to divisional applications to reinstate claims of an abandoned application that may include a single inventive concept may not work.
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