New developments in divisional patents

Section 16 of the Patent Act states that a person who has made an application for a patent under the act may, at any time before the grant of the patent, if it wishes or with a view to remedying an objection raised by the controller on the grounds that the claims 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 application.

This raises the question of whether it is correct that subject matter that is disclosed in the specification but not disclosed in the original claims cannot be divided out.

In most cases, the controller can allow a divisional application if the claims of the parent application relate to multiple inventions. A problem arises if the parent application does not have multiple independent claims (original claims in the parent application) but a divisional application has been filed based on subject matter disclosed in the specification. In general, in such case the controller will not allow a divisional application. However, there has been a new positive development in this direction.

New developments
September 30 2016 order
The Controller of the Indian Patent Office issued an order dated September 30 2016 in respect of divisional Indian Patent Application 602/KOL/2006, wherein the divisional application has been allowed (the parent application was IN/PCT/2002/00929/KOL, granted as Indian Patent IN210024). In this case, the controller raised an objection that the scope of the principal claim of the divisional application overlapped with the granted claim of the parent application, and as such, was not allowed. However, in response the applicant argued that from the differences between the proposed amended claims in the divisional application regarding the granted parent claims presented above, it was evident that the scope of the proposed amended claims (claims 1-19) was distinct from the scope of the granted parent claims in terms of distinct inventions which could not be linked under the same inventive concept of the claims of the parent application (the granted patent). The controller allowed the divisional application under Section 15 of the Patents Act.

Comment
The claims of the divisional application need not to be present in identical form in the parent application at the time of filing or prosecution. However, the distinct invention illustrated in an embodiment should be included or illustrated in the written description originally filed with the parent application. In addition, the claims of the divisional application shall not conflict or overlap with the claims of the parent application.

The controller’s conclusion that Section 16 is not directed to divide out the original claims as a remedy to unity of invention clarified the act enables the division of an invention from a juxtaposed distinct invention. In addition, the controller has mentioned the underlying established philosophy of "one patent for one invention".

Indian Patent Appellate Board order
Indian Patent Appellate Board (IPAB) Order OA/6/2010/PT/KOL (August 10 2011) also related to the division of patent applications. The order held that the intended purpose of the statutory provisions under the section relating to the division of an application is to:

• cure any defect relating to multiplicity of invention in one application;
• enable filing of a division application to protect multiple inventions disclosed in one application; and
• allow the priority date of the parent application for the divisional application.

Therefore, the first essential requirement of the provision is the existence of plurality of invention in the parent application. Section 16 imposes a bar on filing the same claims as it mandates the controller to seek such amendment of the complete specification as may be necessary to ensure that neither of complete specifications includes a claim for any matter claimed in the other.