Continuing uncertainty over divisional patent system

Divisional patent applications refer to patent applications that are divided out of an initially filed application (also referred as the main or parent patent application). Section 16 of the Patents Act 1970 provides that a divisional application can be filed at any time before grant (or refusal) of the parent application. While a divisional application is usually filed with a view to resolving invention-based objections raised by the controller in the examination report, it may also be filed voluntarily by the applicant, provided that the applicant is able to prove the presence of distinct inventions in respect of the parent patent application.

The 'distinct inventions'-based requirement was discussed in an Indian Patent Office (IPO) order of September 30 2016 in respect of divisional Indian Patent Application 602/KOL/2006. In this case, the controller explicitly stated that while claims of the divisional application need not be present in an identical form (ie, claims) within the parent application at the time of filing or prosecution, the distinct invention should nevertheless be included or illustrated as an embodiment in the filed written description of the parent application. The controller explicitly held that Section 16 of the Patent Act is not directed to divide out the original claims, but instead enables division of an invention from a juxtaposed distinct invention.

However, a recent IPO order identified any different embodiment present in the written description of the parent application as a mere alternative solution to the problem addressed by the parent application. Accordingly, the controller held that such embodiment (when claimed) stands identical to the scope of the parent application claims, and accordingly is ineligible to be considered a divisional application. More specifically, in a February 6 2017 order in respect of Indian Patent Application 5026/CHENP/2009, the controller held the filing of a narrower version of parent application claims through a divisional application to be a mere re-filing of the parent patent application, albeit with a narrower scope.

In other words, while the controller acknowledged such narrowed down claims as being an embodiment of the parent application in the form of an alternative solution to the problem, he refused to consider the embodiment as a distinct invention from the parent application. In addition, the controller separately averred that the parent patent application did not comprise multiple inventions and the applicant did not succeed in establishing multiple inventions in the parent patent application. Given that the controller considered the absence of multiplicity of inventions in the parent application as an additional and separate ground for rejecting the divisional application, and did not reject the divisional application solely based on the applicant’s action of claiming a narrowed version of the parent application claims, it may be inferred that the controller also rejected the divisional patent application for not comprising any claim divided out of claims of the parent application. Such inference may be substantiated by the fact that the controller in the order dated February 6 2017 relied heavily on a 2011 decision of the IP Appellate Board (IPAB) in LG Electronics Inc v Controller of Patents & Designs (OA/6/2010/PT/KOL), wherein the requirement for parent applications' claims to contain multiple inventions was held to be mandatory for the first time.

Owing to the aforesaid controller’s decision not to treat the unclaimed embodiment of the parent application as being eligible for a divisional application order and his insistence on the requirement of multiplicity of inventions in the parent application, an inconsistency in Indian divisional patent practice emerged, particularly in light of the September 30 2016 order. More specifically, the February 6 2017 order is contrary to the letter and spirit of Section 16(1) of the Patent Act, which derives from Article 4G of the Paris Convention for the Protection of Industrial Property 1883. Neither these provisions nor the patent legislation of other jurisdictions (eg, the United Kingdom and Australia), which were heavily relied on by the Ayyengar Committee while reforming the Patent Act, mandate the existence of non-unity of invention in the parent application as a prior condition for the eligibility of a divisional application. Voluntary divisional applications are valid provided that the subject matter stands supported in the parent application.

Accordingly, while the September 30 2016 order stood harmonised with the legislative intent behind the Patent Act and international divisional application practice, the controller’s interpretation of the statute in the February 6 2017 order appears to be incorrect. As stated above, in his defence the controller referenced LG Electronics Inc v Controller of Patents & Designs. The LG decision substantially influenced divisional application practice in India by holding the existence of a plurality of distinct inventions to be a sine qua non (essential condition) for grant of divisional status. However, given the facts of the LG, wherein the parent applications claims had been re-filed as a divisional application, the premise of LG is too unusual to lay the foundations for divisional application jurisprudence in India. While the reasoning of LG was upheld by the IPAB in subsequent cases with similar facts (in particular, Bayer Animal Health GmbH v Union of India (OA/18/2009/PT/DEL) and Syngenta Participations AG v Union of India (OA/17/2009/PT/DEL)), the divisional application-based provisions enshrined in the Patent Act were misinterpreted in such decisions. 

Overall, there is divergence between the letter and spirit of national and international legislation pertaining to divisional applications on the one hand, and the majority of adjudications carried out by the IPO and the IPAB on the other. While most of the decisions of the IPO and the IPAB adopt a restrictive interpretation of Section 16(1), it is hoped that orders such as that of September 30 2016 will pave way for a more liberal interpretation of Section 16 in future, in accordance with the true intent behind divisional applications.