
Summary: Divisional applications must be filed before the parent patent application is granted or rejected, but getting the timing right can be tricky, especially when it is not known as to when the grant or rejection will actually take place. A recent case from the Madras High Court offers insights as to when divisional applications must be filed in different scenarios.
Introduction
A divisional application is a patent application through which one can split a parent application into multiple applications, each claiming separate inventions. Divisional applications are usually filed when the parent application lacks ‘unity of invention’; in other words, more than one invention is claimed or disclosed in a single application.
Besides the general principle of why divisional applications may be filed, there are procedural conditions that must be met too, one of which is that it must be filed before the patent is either granted or rejected. However, an applicant does not usually know when the patent will be granted or rejected, because the Indian Patent Office (IPO) does not indicate in advance as to when they will issue a grant or a rejection order. There is also no fixed timeline to issue an order of grant or rejection; the IPO can issue a grant notice any time after an applicant responds to the first examination report (FER) or files written submissions after hearing. This period differs for each case, and may range from months to less, sometimes even the same day. It is not impossible to be in a situation where the applicant ends up filing the divisional application on the same day on which the patent was granted or rejected.
This is exactly what happened in the recent case of BASF SE Vs. The Deputy Controller of Patents and Designs (C.M.A.(PT) No.38 of 2024, Order dated 28.11.2024, Madras High Court). In this case, the divisional application was rejected for having been filed on the same day on which the parent was granted.
Background
The chemicals giant, BASF, filed a divisional application No 201945034726 entitled “Method for Producing Crude Oil Using Surfactants Based on C16C18- Containing Alkyl-Propoxy Surfactants” for the Indian Patent application no 7210/CHENP/2012. As it turned out, the divisional application was filed on the same day (28 August 2019) on which the parent application was granted.
The IPO rejected the divisional application on two grounds:
- Firstly, that the divisional application was not filed before the grant of the main (parent) application. Specifically, the patent number of the parent was generated at 11.59 am on 28.8.2019, while the divisional application was filed at 8.29 pm on the same day. Therefore, according to the Controller, the applicant was aware that the patent was granted and yet chose to file a divisional application, in contravention of section 16 of the Patents Act.
- Secondly, The claims of the complete specification did not relate to more than one invention.
The applicant’s case
According to BASF, the IPO issued the order without applying its mind to the fact that the applicant had filed the divisional application on the same day on which the parent was granted. Further, it would be impossible for the appellant to know the exact timing when the patent was granted in favour of the appellant.
Additionally, BASF pointed out that IPO had not raised any objection on the distinctiveness of its patent in the hearing notice, but cited this as a ground in its order rejecting the divisional application. Thus, according to BASF, the IPO had not given it an opportunity to submit its explanation against these contentions. Therefore, the order was passed in violation of principles of natural justice, and was liable to be set aside.
The IPO’s case
The IPO stated in court that while the order of grant was issued at a point of time before the filing of the divisional application, the time of the order could not be made known to BASF in advance.
Findings of the Court
The Madras High Court held that the IPO’s order rejecting the divisional application was a result of “total non-application of mind” to the admitted fact that the divisional application filed on the same day the patent was granted, and it was impossible for BASF to have known the exact timing as to when the patent was granted.
The Court also agreed with BASF that the rejection order was in contravention of natural justice, as no opportunity was provided to defend the issue of distinctiveness raised by the IPO.
The Court thus allowed BASF’s appeal against the IPO’s order, and remanded the matter to the IPO for fresh consideration of the divisional application on merits and in accordance with law.
Conclusion
This case offers considerable guidance to patent applicants considering filing divisional applications. The main takeaway would be that, as the date of grant or rejection of a parent application is always uncertain and differs from case to case, it is advisable to file the divisional application as soon as practically possible.
It follows logically, in at least three scenarios, as to when such a decision (to file a divisional application) must be implemented upon. This is encapsulated in the table below:
When decision to file divisional application is taken | Divisional application should ideally be filed |
Before receipt of FER/Office Action | As soon as possible |
After receipt of FER/Office Action | Before or on the date of filing response to FER/Office Action |
After receipt of hearing notice/ after hearing | Before or on the date of filing the written submission to hearing |
If these simple rules are followed by patent applicants, the chances of the IPO rejecting the application on procedural grounds of date or time of filing can be considerably reduced.