Divisional Applications In India – IPAB Provides Practical Guidelines For Uniformity
The Intellectual Property Appellate Board (IPAB / Board) in a recent order (OA/66/2020/PT/DEL) dated 27 October, 2020 allowed the appeal filed by ESCO Corporation (Appellant) challenging the refusal of its patent application 8094/ DELNP/ 2008 by the Controller of Patents & Designs, New Delhi (Respondent). The Respondent had refused the grant of patent solely on the ground that the application did not meet the requirements of Section 16(1) of the Patents Act, 1970 (Act) for a divisional status which has been overturned by the Board in the appeal. In the instant order, the Board clearly puts forth important guiding principles in the context of divisional application filing and examination under Section 16 of the Act in order to bring uniformity in practice. Interestingly, the file wrappers for these applications show that the parent and the divisional applications were examined by two different Controllers.
Briefly, the facts of the case leading to the refusal of the patent application are as follows. The Appellant had filed a first application no. 4702/DELNP/2005 (parent application) with 56 claims with claims 1-40 directed to ‘Wear assembly’, claims 41-52 directed to ‘Wear Member’ and claims 53-56 directed to ‘A method of attaching a wear member to a support branch….’. These claims were further amended and only 34 claims were retained with claims 1-14 directed to ‘A wear assembly’, claims 15-19 directed to ‘A method..’, claims 20-28 directed to ‘A lock…’, claims 29-31 directed to ‘A wedge..’ and finally, claims 32-34 directed to ‘A wear member..’. In response to an objection raised in the first examination report that claims 20-34 were inconsistent with claim 1 and plurality of independent claims existed, the Appellant filed a divisional application (instant application - 8094/DELNP/2008) with claims 20-34. In the first examination report issued for the instant application, an objection under Section 16(3) of the Act was raised for claims 13-15 directed to ‘A wear member’, which corresponded with claims 32-34 of the amended claim set of claims 1-34 of the parent application. In response, the Appellant amended the claim set such that only claims 13-15 were retained as claims 1-3 in the instant application. The Controller however, was of the opinion that the pending claims 1-3 did not relate to an invention distinct from that claimed in the parent application as the wear member was already a feature of the wear assembly claimed in the parent application, and thus the divisional application was illegitimate ab initio, leading to the refusal of the application no. 8094/DELNP/2008 due to non-compliance of requirements of Section 16(1) of the Act.
The Board provides a very well-reasoned order and puts forth two critical conclusions:
(1) A patent application can only be divided if it claims ‘more than one invention’. The IPAB reaches this conclusion based on the legal provisions of Section 16, Section 7 and Section 10 (5) of the Act, relevant portion of the MPOPP for divisional application, and its recent orders (L. G. Electronics - OA/6/2010/PT/KOL; Proctor & Gamble - OA/47/2020/PT/DEL; and, National Institute of Immunology - OA/21/2011/PT/DEL).
(2) “One invention” is defined as the claims of the complete specification directed to either ‘a single invention’ or ‘a group of inventions linked so as to form a single inventive concept’. The Board reaches this conclusion based on the legal provisions of Section 10(5) and Section 7 of the Act. It clearly states that ‘no two invention(s) can be allowed in a single patent application, unless it conforms to a single inventive concept. Hence, either way, it is a single inventive concept which is allowable in one application, as per the satutory provisions. We may like to call it as “One Application One Inventive Concept (OAOIC)” which is allowable in a single application.’
Porting these assessments for the present case, the Board acknowledges that all the claims 1-34 of the parent application ought to have been allowed with suitable amendments as they relate to a single inventive concept, that the Appellant had filed the divisional application in response to the objection raised by the Controller for the parent application, and that it will not be a case of ‘double patenting’ if the divisional application is allowed.
Guiding principles for divisional applications
Considering the legal provisions of Indian Patent law, the Manual of Patent Office Practice and Procedure, the PCT and the previous decisions issued by the Board, the following points under formal and substantive grounds have been listed by the Board to be looked into when dealing with divisional applications.
(1) The divisional application may be filed in either of the cases:
- by the applicant (suo-moto), if he so desires;
- in remedy to an objection raised on the ground of plurality of invention.
In either case, the existence of plurality of invention in the parent application is the sine qua non for filing a divisional application.
(2) The claims of divisional application shall have their route in the first mentioned (parent) application, even for divisional-to-divisional applications. The divisional application shall not be filed with the same set of claims as the first mentioned application.
(3) The applications need to be divided only on the ground of ‘plurality of invention’ as envisaged under section 16 of the Act. Claims held non-patentable in view of any other provisions of the law shall not merit a divisional application status.
(4) The primary requirement for division of an application is that the application shall exist and no divisions can be made from applications that are either “deemed to be abandoned”, ‘withdrawn” or “refused”. However, once filed, the divisional application shall continue as a substantive application and the status of the parent application will not affect the divisional application.
(5) The divisional application may be filed any time until the grant of patent. The Board has however recommended introduction of ‘Intimation to Grant’ to bring certainty in the final date for filing divisional applications.
(6) The divisional application may be filed before the grant of the first mentioned patent application. In case of filing a divisional-to-divisional application, the Board has directed that the Applicant shall not be left without any remedy.
(7) The complete specification of the divisional application shall not include any matter not in substance disclosed in the complete specification of first mentioned application. Thus any additional claims which never formed part of the originally filed claims shall not be allowed in a divisional application.
Under this section, the Board provides guidance for examination of divisional applications.
(1) The presence of different embodiments in the specification, claimed as independent set of claims, does not necessarily attract the provisions of lack of ‘unity of invention’. The Board also recommends that the option of amending claims be primarily exercised to overcome any ‘claim scope or ‘claim definitiveness’ requirements rather than an outright objection on plurality of inventions.
(2) In the event plurality of inventions is ascertained in the claim set under examination, the groups of distinct inventions need to be identified in the First Examination Report (FER) so as to minimize the chances of filing divisional-to-divisional applications and needless legal complications.
(3) Examination of a divisional application ought to be always done vis-à-vis the first mentioned application. If two or more divisional applications are filed based on a first mentioned application, then the examination of the second/subsequent divisional application(s) shall be done vis-à-vis the first mentioned application and other divisional application(s) examined earlier, if any, to avoid double patenting.
(4) When an objection on unity of invention is raised in the examination of the first mentioned application, the divisional application shall not be disallowed if it fulfills all other statutory requirements and the applicant is ready to remove the conflict, if any, by amending the same. The statutory powers of the Controller with respect to divisional applications has been acknowledged by the Board, but with an advisory add-on that such powers shall be utilized keeping in view the complete statutory provisions and (then) applied on a case-to-case basis.
To conclude, the instant order of the Board is very welcome as it provides clear direction and path for evaluating divisional application status. The present order has taken into account the provisions in the statute, the legal bindings of PCT, the jurisprudence and provides a set of legal guiding principles that aims to impart consistency and uniformity in evaluation and examination of divisional applications, and provides clarity to stakeholders who may strategize effectively by eliminating or minimizing unnecessary risks in the course of seeking patent protection.