In a recent decision issued by the IPAB, the division bench comprising of Justice Prabha Sridevan with technical member, DPS Parmar – has reiterated the divisional practice that is supposed to be followed before the Indian patent office. See decision: The basis of a divisional application is the existence of a plurality of invention. This is a sine qua non for seeking a division of an application.
The decision puts a formal stop to the practice of filing multiple applications for the same invention and calling them as divisionals. Long post follows.
Procedural history: The applicant (Bayer Animal Health GMBH) had filed an application in the year 1999 at the Delhi patent office with application number: 1427/DEL/1999 (hereafter the 1427 application). This application was formally numbered as a divisional application of 371/DEL/1997 (hereafter the 371 application).
The 1471 application was examined and a FER was issued on 2nd July, 1999 and the FER contained an objection that the invention was not patentable under the then existing section 5(1)(b) of the Patents Act, 1970. An additional objection was that it was a pharmaceutical product with a chemical product base. The agent did not respond to the objections and accordingly the application was abandoned under S. 21(1) of the Act for not complying with the requirements.
After the new Act came into force and chemical substances became patentable, the appellants filed afresh, another application for the same invention as a divisional application of the earlier main application. This fresh application was again examined and a FER was issued on 20th September, 2007 including the objection that the application was not a valid application under Section 16 and it did not comply with the requirements of section 16.
In response, the appellant replied to the objections stating that the Examiner had not given a correct interpretation to the provisions of Section 16. However, the agent did not disclose that the earlier application was abandoned. The application was again examined and another FER was issued containing the same objection on 8th October, 2008. In this report, the applicant was informed that the fresh application could not be considered as a divisional application and that section 16 required the parent application to contain more than one invention for filing a divisional application.
The agent again reiterated that the application had been validly filed and requested for a hearing. And that because the invention was not patentable under the earlier Law that the original application could not be proceeded with and therefore the present application should not be rejected.
The Deputy Controller dismissed the contention of the applicants that they were entitled to file a divisional application even if the parent application did not contain more than one invention. The following findings were made by the Deputy Controller: (1) The concept of divisional application is basically to protect multiple inventions disclosed in one patent and if in one parent application, the claims did not relate to a single invention, the Law provides the appellant to file a further application as a divisional application on his own or at the instance of the Controller. (2) The claims in the parent application and the instant application were exactly the same. (3) The applications did not disclose more than one invention. (4) The fresh application has been filed as a divisional application to protect the same invention as the parent application. Though this was not patentable under the Law prior to 2005, it would have been protected if due care has been taken. (5) The appellant could not revive the parent application, which was not patentable at the earlier time of filing as the law did not provide it.
Applicable law:
Section 16. Power of Controller to make orders respecting division of application.– 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.
(2) The further application under sub-S. (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.
(3) The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.
Explanation.– For the purposes of this Act, the further application and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.
In their arguments, the applicants referred to certain office instructions issed by the Controller:
No. CG/F/14/5/8(B)/2005/29 dated 03/05/2005. CG’S INSTRUCTION NO. 3/2005: It has been observed that divisional applications are being filed with respect to claims which were not allowable under S. 5 of the Act before 01/01/2005 without following the provisions of S. 16 read with S. 10(5) of the Act. It is hereby ordered that such divisional application shall be examined under the above said provisions of the Act. No division of such application shall be allowed which are not qualifying for more than one invention or satisfying the provision of single inventive concept under S. 10(5) of the Act. (Sd/-) (S. Chandrasekaran) Controller General of parents, Designs & Trade Marks.
No. CG/F/2006/ dated the 18th July, 2006. Camp: Delhi. Addressed to: All the Head of Offices, parent Office, Kolkata, Mumbai, Chennai & Delhi. Subject:- Clarification in respect of CG’s Instruction No. 3/2005 dated 03/05/2005. Gentlemen, Kindly refer to the Instruction No. 3/2005 dated 03/05/2005 in respect of divisional application. In this connection, it is to clarify that any divisional application filed under the provisions of Section 16 claiming product claims which were not allowable under S. 5 of the Act before 01/01/2005 shall be allowed in accordance with the parents Act, 1970, as amended by the parents (Amendment) Act, 2005. All the Controllers are hereby direction to ensure that ll the divisional applications abandoned as per the Instruction No. 3/2005 should also be reviewed. Yours faithfully, (Sd/-) (S. Chandrasekaran) Controller General of parents, Designs and Trade Marks.
Holding:
Reading both the instructions and provisions of Law relating to divisional applications, the instructions issued by the Controller General only mean that there might have been applications filed prior to 01/01/2005. Those applications might have consisted of plurality of inventions and one of the multiple invention in the said application may have related to a product which was not patentable under the earlier Act. These can now be processed as a divisional application subject to satisfying all the criteria for grant of patent and also the criterion for treating it as a divisional application. It cannot be construed to mean the re-submission of the same claims that were made in the parent application disguising it as a divisional application will be entertained. It still has to satisfy the requirements of S. 16….
What the appellant wants is that this application should be treated as a divisional application with the priority date of the parent application. The impugned order correctly holds that unless the divisional application satisfies the test under S. 16, it cannot be entertained.
To my mind the IPAB is right in holding that “unless the divisional application satisfies the test under S. 16, it cannot be entertained”.