What is a divisional application?

A divisional patent application is derived from a previously filed patent application which relates to more than one invention or inventive concept. Such applications fall under purview of section 16(1) of the Indian Patents Act, 1970.

Ambiguities before IPAB:

Over the years, IPO and patent lawyers maintained the ideology that divisional applications could be filed at any time before the grant of the patent, if desired by applicant. This provision was adopted to certain cases when applicants were not able to comply with statutory time period for placing the application for grant. In scenarios like these, in order to claim the priority date, applicants used to file a divisional application, with similar claims as those present in the parent application, just before the due date expired. The ambiguity lied in the matter that whether such applications were supposed to be allowed or rejected. These matters soon reached IPAB for clarification and laying out right approach when filing a division application.

The provision of divisional applications was also utilised in order to claim subject matter that were rejected for reasons corresponding to not being patentable subject matter under Section 3 of the Patents Act. As an example, applicants whose prior applications based on chemical compositions that were denied for being not patentable, started filing divisional application essentially claiming the same invention as the parent application. This interpretation led to allowing many divisional applications whose parent application was rejected. The IPAB was required to clarify the position of such application with legal perspective.

ESCO Corporation v. Controller of Patents and Designs, New Delhi

In a recent order (OA/66/2020/PT/DEL) by IPAB dated October 27, 2020, the IPAB allowed the appeal filed by ESCO Corporation (Appellant). The Appellant bears a patent application numbered 8094/ DELNP/ 2008 which got rejected by Controller of Patents and Designs, New Delhi (Respondent). The Respondent refused the grant of patent on the ground that the application failed to meet the requirements of Section 16(1) of the Patents Act, 1970. In this case of applicant, the parent and divisional applications were examined by different Controllers. 

Brief facts of the case:

• The Applicant had filed the first application no. 4702/DELNP/2005 (hereinafter referred as parent application) with 56 claims, out of which claims 1-46 were related to “Wear assembly”. The claims 41-52 were related to “Wear member” and claims 52-56 were related to “a method of attaching a wear member to a support branch”.
• These claims underwent further amendments leading to retainment of only 34 claims. The claims 1-14 were related to “A wear assembly” and claims 15-19 were related to “a method” and claims 20-28 were related to “a lock” and claims 29-31 were related to “a wedge” and rest 32-34 were related to “a wear member”.
• An objection was raised in the first examination report of the parent application that claims 20-34 were inconsistent with claim 1 and plurality of independent claims existed. In response, the Applicant filed a divisional application (8094/DELNP/2008) corresponding to the current application with claims 20-34. In the first examination report issued for the current application -8094/DELNP/2008, an objection was raised under section 16(3) of the Patent Act by Controller for the claims 13-15 related to “A wear member” which corresponded with the claims 32-34 of the amended claim set of the claims 1-34 of the parent application. In response, the Applicant amended the claim set such that only claims 13-15 were retained as claims 1-3 in the current application.
• The Controller objected on grounds that the claims 1-3 did not relate to an invention distinct from claims in the parent application, since the wear member was already a feature of the wear assembly claimed in the parent application. Hence, the divisional application was illicit.  The application no. 8094/DELNP/2008 was refused due to non-compliance with requirements of Section 16(1) of the Act.

Reasonings by the IPAB:

• A patent application is supposed to be divided if the claims pertaining to the parent application include “more than one invention”. The IPAB reached this conclusion by accounting legal provisions of Section 7, Section 10(5) and Section 16 of the Act, MPOPP for divisional application and recent orders- OA/6/2010/PT/KOL (L.G. Electronics); OA/47/2020/PT/DEL (Proctor & Gamble); and OA/21/2011/PT/DEL (National Institute of Immunology).
• The term “one invention” corresponds to the claims of the complete specification related to either “single invention” or could be “a group of inventions linked so as to form a single inventive concept”. This conclusion of the IPAB was based particularly on legal provisions of Section 7 and Section 10(5) of the Act. The order recites that “no two invention(s) can be allowed in a single patent application unless it conforms to a single inventive concept. Hence, either way, it is a single inventive concept which is allowable in one application, as per the statutory provisions”.
• In the case of 4702/DELNP/2005, the IPAB acknowledged that all the claims 1-34 of the parent application could have been allowed with the suitable amendments as they relate to a single inventive concept. However, the Applicant filed a divisional application based upon the objection by the Controller in the first examination report of the parent application. Further, the IPAB made an observation that the filing of the instant divisional application for the parent application does not lead to double patenting issues and hence allowed the divisional application.

Listings by IPAB:

The IPAB relied on legal provisions of Indian Patent law, the Manual of Patent Office Practice and Procedure, the PCT and the previous orders issued to list down the following key points to be looked into while addressing issues concerning divisional applications.

Points to be considered before filing divisional application:

• If applicants desire on their own accord (Suo-moto), they can file a divisional application.
• The applicant may file a divisional application in order to find solution to an objection raised on the ground of plurality of invention in the parent application. The existence of a plurality of invention in the parent application is the crucial and mandatory for filing a divisional application.
• The divisional application should not be filed with the same set of claims as the parent application.
• Division of the parent application should be exercised on the ground of ‘plurality of invention’ as contemplated under section 16 of the Act.
• The application shall exist and no divisions can be made from applications that are either “deemed to be abandoned”, ‘withdrawn” or “refused”. In addition, after the filing of the divisional application, the divisional application will continue and the legal status of the parent application will not affect the divisional application.
• The divisional application can be filed any time until the grant of patent.
• The complete specification of the divisional application should not include any subject matter not disclosed in the complete specification of the parent application. Any additional claims which never formed part of the originally filed claims and complete specification shall not be allowed in a divisional application.

Points to remember while examining the divisionals:

• The fact that there are different embodiments in the specification, claimed as an independent set of claims, does not mandate the application to fall under lacking “unity of invention”. The applicant must be given an opportunity to amend the claims to overcome such objections. As a matter of fact, an outright objection on the plurality of inventions should not be given, just because there are different embodiments in the specification.
• In scenarios where there is plurality of inventions in the claim set, while examining such applications, the distinct inventions need to be identified in the First examination report (FER) in order to reduce the needless legal complications.
• If two or more divisional applications are filed based on a first mentioned application or parent application, then the examination of subsequent divisional application(s) shall be done vis-a-vis the first-mentioned application and other divisional application(s) examined earlier, in order to avoid double patenting.
• When an objection on the unity of invention is raised in the examination of the first-mentioned application, the divisional application should be allowed if it fulfils all statutory requirements. The applicant should be given an opportunity to make amendments accordingly.

Clarifications put forth by IPAB:

• The applicant can file a divisional application only if the claims of the invention pertaining to the parent application do not relate to a single invention. The IPAB also shed light on the fact that, even though an applicant possesses the right to file a divisional application on their accord, this right is debatable and subject to the Controller’s discretion whether to allow or discard such application.
• If claims in the parent application are overlapping with those in the divisional application, the Controller may ask the Applicant to amendment the claims to remove such overlap. In other words, the divisional application should not include any claim that has been present in the parent application.
• The subject matter disclosed in the divisional application should not include any matter that has not been disclosed in the complete specification of the parent application. In order to become eligible as a divisional application under section 16, it is crucial that the parent application, from which the divisional application is filed, should disclose more than one invention.

The instant order (OA/66/2020/PT/DEL) by the IPAB aims at providing clarity regarding filing and prosecution of divisional applications. The present order has taken into account the provisions in the statute, the legal bindings of PCT, the jurisprudence and provides a set of legal guiding principles that aim to provide consistency and uniformity in evaluation and examination of divisional applications.

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