Divisional Practice in the BRICs and other Countries – Part 4 of a 9-Part Series

This is Part 4 of a nine-part series examining divisional practice in the BRIC as well as several non-BRIC countries.  To view Part 1 (Divisional Practice in Mexico), click here.  To view Part 2 (Divisional Practice in Brazil), click here.  To view Part 3 (Divisional Practice in the United States), click here.

Divisional Practice in India

In India, a divisional patent application can only be filed if a plurality of inventions is being claimed in an original (parent) application.

Specifically, according to Section 16 (1) of the Indian Patents Act, 1970 (“Act”), a divisional application can only be filed under the following circumstances:

1.  The original (parent) patent application claims subject matter directed to more than one invention and the Applicant, after filing of the original (parent) patent application but before grant, voluntarily decides to divide the original (parent) application into one or more divisional applications; and

2.  An objection is raised in an Office Action that the claims of the original (parent) patent application relate to more than one invention (namely, the claims lack unity), and hence are not allowable under the Act.   In this case, the Applicant can file a divisional application to overcome such an objection.

It is important to note that an Applicant cannot file multiple patent applications claiming the same invention and refer to each such application as a “divisional” application.

Time Period for Filing a Divisional Application

A divisional application can be filed any time up until the grant of the original (parent) application.

Requirements for Filing a Divisional Application

According to Section 16 of the Act, the requirements for filing a divisional application are as follows:

a) Submission of a copy of the specification, claims and drawings of the divisional application;

b) The divisional application cannot include any subject matter not disclosed in the original (parent) application; and

c) The original application and the divisional application cannot claim identical subject matter.

More than one divisional application can arise from an original (parent) application.  However, a divisional application cannot be filed from a divisional application (namely, no “cascading” divisionals are permitted).  In other words, any and all divisional applications must be divided out of the originally filed (parent) application.

In a recent decision, two divisional applications (specifically, applications 3272/KOLNP/2008 and 3273/KOLNP/2008 owned by Roche AG directed to the breast cancer drug Herceptin) were rejected because a divisional application of a divisional application was found not to be permissible under the Act.  Click here to learn more about this decision.  

Claims of a Divisional Application

A divisional application may be filed with the claims as originally filed in the original (parent) application or PCT application.  However, the claims of a divisional application filed containing the claims of an original (parent) or PCT application will need to be amended at some point prior to issuance to ensure that neither the original (parent) or divisional application claim identical subject matter.  In other words, there should be no overlapping of claimed subject matter in the original (parent) and the divisional application.

Double Patenting

In India, an Applicant is entitled only to a single patent per invention as per section 46 of the Act.  In other words, double patenting is not permitted.  Pursuant to section 16(3) of the Act, an Examiner may require amendment of the claims of either the original (parent) or divisional application as necessary to ensure that neither application includes a claim for any identical matter claimed in the other application.

If a double patenting problem arises, the Examiner will raise an objection and the identical subject matter must be deleted from the claims of either the original (parent) application or the divisional application.

Examination of Divisional Applications

A divisional application is accorded the same filing date as the original (parent) application.   However, a divisional application is treated as a substantive application and is accorded a separate application number, requires separate fees, requires a separate request for examination, will be prosecuted separately from the original (parent) application, and will result in an independent patent from the original (parent) application.  The fees for a divisional patent application are the same as for any original (parent) application.  The term of patent for a divisional application is twenty years from the filing date of the original (parent) application.

A divisional application is examined in relation to the original (parent) application so as to avoid claim overlap resulting in double patenting.

A divisional application is examined only when a Request for Examination (“Request”) is filed within the prescribed period (namely, forty-eight months from the date of filing of the application or from the date of priority of the original (parent) application or within six months from the date of filing of the divisional application, whichever is later).  If a Request is not filed within time, the application will be considered as withdrawn.

As an illustration, an original (parent) application was filed on October 11, 2000 (and later issued as a patent) in the Indian Patent Office.  The grant of the patent was published on April 6, 2007.  A divisional application was filed on August 16, 2005, and a Request for Examination was made on March 17, 2006.  In this case, the Examiner held that the Request for Examination filed for the divisional application on March 17, 2006, was beyond the prescribed period (namely, a Request for Examination was due by February 16, 2006, six months from the date of filing of the divisional application since this was the latest date).  Therefore, the divisional application was treated as withdrawn.

This post was written by Julia Cox, Lisa Mueller and the attorneys at Chadha & Chadha.

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