The Law Relating to Divisional Patent Applications – An Overview

20 October 2017

Section 10 of the Indian Patents Act provides for the “Contents of a complete specification of a Patent Application,” wherein in sub-Section 5, it specifically provides the extent to “what can be claimed” as distinguished from “what is disclosed in the specification.” Thus, although the complete specification discloses matter which relates to more than one invention or inventive concept, the claims of the complete specification can relate only to a single invention or to a group of inventions linked so as to form a single inventive concept.

The Indian Patent Act, however, provides a remedy for a situation where the complete specification discloses and claims more than one invention or more than one group of inventions where each group is not linked by a single inventive concept. The remedy involves filing a divisional patent application.

Section 16 of the Indian Patent Act Provides for the filing of divisional patent applications.

Situations Under Which Divisional Patent Applications Can Be Filed

1. If the applicant so desires, or

2. 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.

Thus, the applicant for a patent may voluntarily file a divisional patent application or with a view to remedy an objection raised by the Controller, in the event the claims of the complete specification relate to more than one invention. It is, however, imperative that the claims sought to be divided out from the parent patent application and included in the divisional patent application be based on matter disclosed in the provisional or complete specification already filed in respect of the first mentioned application, i.e. “if the claims of the invention disclosed in one patent application do not relate to single invention or to a group of the inventions forming a single inventive concept, the applicant can file a further application as divisional application out of that application either of his own (suo moto) or when the objection of claiming of more than one invention is raised by the Controller. Further, where any overlapping of the claims in the parent application with the divisional application is observed, the Controller may seek the amendments in the complete specification of the divisional application to ensure that there is no overlapping of claims between the these applications. The later application should not include any claim already claimed in the parent application. Moreover, the matter disclosed in the divisional application should not include any matter not disclosed in substance in the complete specification of the parent application.”

A mere splintering of an invention between the parent and the divisional application may not sustain the divisional application.

The Intended Purpose of the Statutory Provisions Under Section 16 Relating to Division of Application

1. To cure any defect relating to multiplicity of invention in one application,

2. To enable filing of division application to protect the multiple inventions disclosed in one application, or 3. To allow the priority date of the parent application for the divisional application.

Can a Divisional Patent Application Be Filed at Any Time?

The Indian Patent Act mandates 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.

The Effect of Filing a Divisional Patent Application

The divisional application and the complete specification accompanying it shall be deemed to have been filed on the date on which the parent 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.

The term of the patent granted on a divisional application is 20 years from the date of the filing of the parent patent application.

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About the author

Dominic Alvares

Dominic Alvares, an advocate and registerd Indian Patent gent is an associate at S. Majumdar & Co., and is based in its Mumbai office. He has been involved in numerous contentious matters before the Indian Patent Office, as well as revocation and appeal proceedings before the Intellectual Property ppellate Board, mainly in the fields of biotechnology, chemistry (such as APIs) and pharmaceuticals. He is also involved in contentious and non-contentious trademark matters before the Indian Trade Marks Registry. He represents clients before the Controller of Patents and Registrar of Trade Marks, and other judicial and quasi-judicial forums, including the Customs Office.