In a crisp and well-written post, Suchita had blogged on Section 3(d). “Frequently Anon”, a regular reader of the blog, posted a comment lamenting on the practice, of certain entities, of filing divisional applications carved out from a parent application in a patent office different from the one in which the parent was filed.
Simply put, if A files a parent application ‘X’ at the Chennai Patent Office, according to my reading of the comment, it seems like Frequently Anon suggests that the divisional ‘Y’ carved from X too must be filed at the Chennai Patent Office, and not any other office. This piqued my interest and I thought this was worth researching on.
The relevant provision to be referred to is Rule 4 of the Patent Rules, 2003. Rule 4 is titled “appropriate office”; the appropriate office is the office within whose territorial limits the applicant normally resides or has his domicile or has a place of business or where the invention actually originated. Any of these criteria may be relied upon to decide the appropriate office.
Sub-rule 1 of Rule 4 speaks of “the appropriate office shall for all the proceedings under the Act…”. Can an applicant file the parent application in one office using one criterion for selection of the appropriate office and file the divisional in a different office using another criterion?
Sub-rule 2 of Rule 4 states that “the appropriate office once decided in respect of any proceedings under the Act shall not be ordinarily changed”. One could adopt two different lines of arguments.
The first line of argument could be that filing of a divisional application too is a proceeding under the Act, so the filing of the divisional application too must be at the same appropriate office. In other words, if the filing of the divisional were to be treated as the belonging to the same proceeding i.e. proceeding flowing from the same application, it must be filed at the same office.
If so, what is the extra-ordinary reason which Sub-rule 2 envisages which justifies filing of the divisional at a different patent office? One probable reason could be if the divisional application is assigned to an entity which would normally fall under the jurisdiction of a different office.
The second line of argument could be that “any proceedings under the Act” may be interpreted to mean as a proceeding pertaining to a single application. It could be argued that, but for the fact that a divisional application owes its existence to the division of the parent application, the divisional application is an independent substantive application. Therefore, since the proceedings of the divisional are different and independent from the proceedings of the parent, one may choose to file the divisional in a different office.
This may also be justified if the applicant has two places of business, each of which falls under the jurisdiction of two different offices. Note that Rule 4 speaks of only a “place of business” and not “the principal place of business”. (Interestingly in contrast to Rule 4 of Patent Rules, Rule 4 of the Trademark Rules, 2002 speaks of “the principal place of business”)
The second line of argument seems to receive further credence when one juxtaposes sub-Rule 2 of Rule 4 of the Patent Rules with Rule 5 of the Trademark Rules. Rule 5 of the Trademark Rules states that the jurisdiction of appropriate (trademark) office shall not be changed by change in principal place of business or address of service.
Therefore, one might say that sub-Rule 2 of Rule 4 of Patent Rules replicates Rule 5 of Trademark Rules and conveys that all proceedings with respect to a single substantive application shall be carried out in the same office. This means that once an application is filed at a certain patent office, proceedings such as examination of the application and a hearing on the application cannot be ordinarily carried out in different offices.
Consequently, if the divisional is treated as a different application, it need not be filed at the same office.
Consequently, if the divisional is treated as a different application, it need not be filed at the same office.
Both these legal arguments aside, one must look at Rule 4 from a different angle, which Frequently Anon has sufficiently alluded to and must be given credit for. Applicants sometimes may abuse the provision of divisional applications by claiming the same invention in both the parent and divisional applications. If the two applications are filed in two different offices, it becomes difficult for an examiner or a competitor to detect what is called “double patenting”.
To avoid this, one may purposively interpret Rule 4 to mean that the divisional too must be filed in the same office if the system of patents is to be kept clean.
However, since the applicant has to per force disclose the details of the parent if he intends to claim the benefit of the priority of the parent application, one wonders if it is really that difficult for competitors or examiners to detect any mischief on the part of the applicant.
There’s a very good chance that I may be way off the mark in my understanding of this provision. I welcome comments from better-experienced practitioners to help us understand other aspects, if any, of the provision.
I have not come across a single case, where such change had been made. Even otherwise while filing divisional application details of parent have to provided (as per Form 1) and also as per statement and undertaking on FOrm 3. So in any case chances of double patenting are nill. So wrong information if at all supplied will be a ground for opposition as well as revocation and also his previous patent may be cited in anticipation against him.
Sudhir, although I agree with you broadly, could you please explain how Form 3 comes into the picture? Because my understanding is that Form 3 pertains to statement of information regarding only foreign applications.
Bests,
Sai.
Filing of divisional applications from a parent application can only be done on the same patent office where the original application was filed. This is because, you are dividing the parent application into two or more divisional applications. Hence filing divisional application in a different patent office does not serve the purpose at all. In fact, what will happen subsequently is that the application filed if different will be sent to the patent office where the parent application was filed.
Thanks for correting me, yes it would only be form 1 information, as form 3 pertains to only foreign applications
JSD,
I am not sure of what you mean by ‘disclose the details of the parent’.
What generally happens is that the 2nd office only asks for the priority document.
The 2nd Indian Office does NOT send the filing to 1st Indian Office nor does it demand that the Applicant give a reason on why it is filing a divisional at this 2nd office as against going and filing the divisional at the 1st office itself.
Regards,
Freq. Anon.