The relevant provisions pertaining to divisional applications are embodied in Section 16 of the Patents Act. Section 16(1) provides that “a person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.” Several decisions of the IPAB (Intellectual Property Appellate Board) thus far have clarified that plurality of distinct inventions is a sine qua non for filing a divisional application. However, the approach of the Indian Patent Office (IPO) towards divisional applications has always been cautious, to say the least, and the validity of divisional applications filed voluntarily has invariably been questioned by the IPO at the stage of prosecution.
In a recent matter handled by Remfry & Sagar, the IPAB passed a favourable order in the context of a divisional application, directing the grant of a patent after refusal by the Patent Office. The Controller at the IPO had raised an objection in the First Examination Report of the parent application that “Claims 4-6 and 7-10 appear to be independent claims that should be made dependent on claim 1”. While claims 4-6 were pursued in the parent application, the Appellant voluntarily filed a divisional application based on the perceived distinct and independent nature of claim 10, however, the latter was not expressly admitted by the IPO during the prosecution of the parent application and the divisional application was eventually rejected, inter alia, for not constituting a valid divisional application under Section 16 of the Patents Act.
According to the IPAB, “It is settled position that when an independent sub-claim cannot be made dependent on the main claim, the subject matter of such claim would be distinct from the subject matter of the main claim.” The Board went on to further hold that, “The Appellant has not derived any unfair advantage by filing a divisional application. On the contrary, the Appellant has only been disadvantaged in pursuing the scope of the compounds of formula (I), (Ia) and (Ib) in the divisional application as opposed to pursuing the same in the parent application since the Appellant has lost almost six and a half years in prosecution of the divisional application besides incurring additional official fees and attorney fees.”
Disagreeing strongly with the IPO’s stance, it noted that, “The Respondent ought to have considered the circumstances which necessitated the filing of the divisional application instead of refusing the application on hyper technical grounds based on a premeditated intention of refusing the subject divisional application. No mala fide/ negligence could be presumed against the Appellant for filing the divisional application.” The IPAB concluded that the Appellant was incorrectly penalized for not carrying out a technically unfeasible amendment in the parent application for, the IPO had erred in refusing the subject divisional application on the ground that the scope of the subject matter pursued in the divisional application ought to have been pursued in the parent application.
This order assumes significance as it furthers jurisprudence with respect to the validity of divisional applications which are filed voluntarily and not rooted in an express objection (based on existence of distinct inventions) by the IPO vis-à-vis the parent application. One hopes this decision will serve as a stepping-stone for the issuance of more favourable decisions, including from the IPO, in respect of ‘voluntarily’ filed divisional applications in the days ahead.