Searching for Clarity in India’s Divisional Applications

Indian patent practice has been changing at a rapid pace these last few months. Among other things, the Indian Patent office (IPO) has strengthened e-filing services for patents and trade marks, continues to digitise its records, and has released guidelines on the examination of biotechnology and computer-implemented inventions. Among all these changes, of particular interest is the wave of new and significant judicial interpretations of provisions of the Indian Patents Act 1970 that have swept the system, and which have led to changes in patent practice in the country. For instance, the Intellectual Property Appellate Board (IPAB) has issued notable decisions on substantive issues relating to the patentability of pharmaceutical compounds; pre-grant opposition procedures; and, compliance requirements before the IPO. A key issue that has remained unchallenged for a long 01 August 2013 10/17/13 Searching for clarity in India’s divisional applications | Managing Intellectual Property www.managingip.com/Article/3243288/Searching-for-clarity-in-Indias-divisional-applications.html 2/6 time in India relates to the practice of filing divisional applications. A series of IPAB decisions has invited a re-evaluation of existing practice. T his note discusses some of these changes, and offers some perspective on the implication of these decisions on future applicants.

Divisional applications in Indian patent law

Provisions in patent law dealing with divisional applications enable applicants to divide one application into two in the event that they find a plurality of inventions in the original patent application. T he legislative structure of the provision for divisional applications in the Patents Act is such that the provision was also invoked for use in filing continuation applications. In the United States, the law on continuation applications allows an applicant to pursue additional claims to an invention that was disclosed but not allowed in the parent application. Such applications are generally filed where the examiner has allowed some but rejected other claims in the parent application.

For over two decades, patent attorneys as well as the IPO maintained the stance that divisional applications could be filed at any time before the grant of the patent, if the applicant so desired. T his provision was frequently resorted to when applicants were unable to comply with the statutory time period for placing the application in order for grant. In such cases, so as to claim the priority date (which is the date when the first application in respect of an invention was made), applicants would file a divisional application, with the same claims as in the parent application, just before the due date lapsed. T here was ambiguity in the practice being followed at the IPO: divisional applications filed as continuation applications were allowed or rejected, with little consistency. Matters reached the IPAB, which had to eventually clarify the issue, and lay out the correct approach to be adopted when filing a divisional application.

This provision was also invoked in order to claim subject matter that had been rejected in parent applications for reasons of not being patentable under the Patents Act before the law was amended in 2005. For instance, the 2005 amendments made chemical compositions patentable. Applicants whose earlier applications based on chemical compositions were rejected for being not patentable started filing afresh. T he new application would relate to the same invention, and would be filed in the form of a divisional application of the earlier application. T here appeared to be little consistency in the manner in which the IPO handled such applications, allowing many, and rejecting several. T his ambiguity eventually required the IPAB to clarify the legal position on such applications.

Over the past several months, the IPAB has pronounced some key decisions (see LG Electronics, Korea v Controller of Patents and Designs, Kolkata and others; Bayer Animal Health Germany v Union of India and others; and, Syngenta Participations v Union of India) that demonstrate the IPAB’s efforts at ensuring clarity and uniformity in the use of the provision relating to divisional application.

This provision was introduced in 1930 by way of an amendment to the Indian Patents and Designs Act 1911. Subsequently, when the 1970 Patents Act replaced the 1911 Act, the provision relating to divisional applications was incorporated into section 16, and has remained the same with only one amendment in 2005. Previously, an applicant could make such an application at any time “before the acceptance of the complete specification” in India. T he last phrase was substituted, and under the present law, an applicant can make such an application “before the date of grant of patent” in India.

Can divisional applications be filed unconditionally?

The primary issue that arises under this section is whether the patent applicant has an unconditional right to file a divisional application or whether such a right is conditional and limited. T his issue came up in LG Electronics v Controller of patents. In this case, the parent application – for an invention relating to a “suction silencer and compress therewith” – had been abandoned, as the objections raised in the examination report had not been complied with. T he applicant, LG Electronics, subsequently filed a divisional application with the same claims. T he controller rejected the application on grounds that the application was not a valid divisional application under section 16. On appeal before IPAB, LG Electronics argued that section 16 provided the following:

• A divisional application may be filed at any time before the grant of the patent, if the applicant so desires; or
• A divisional application may be filed at any time before the grant of patent to remedy the controller’s objection of more than one inventions being claimed in the application.

The IPAB objected to LG’s reading of only part of the section, observing that it was “not wise to consider Section 16 in a clinical way by leaving (the) other portion of the section”. It made reference to the well-settled principle of law “that the intention of the legislature must be found by reading the statute as a whole and in order to ascertain the meaning of a clause in a statute, the court must look at the whole statute”. T he IPAB also noted that if the applicant’s interpretation was accepted, a patent applicant, instead of complying with objections raised in the examination report, could choose to file a divisional application, and abandon the parent application even if there was no plurality of distinct inventions. T his would result in uncertainty in respect of the grant or refusal of patent application, which would not be in the interest of the public at large.

Accordingly, the IPAB held that although the applicant could file a divisional application on their own before the grant of the patent, the controller was mandated by law to ascertain that the divisional application was because a plurality of distinct inventions were disclosed in the parent application. Effectively, the IPAB concluded that the right to file a divisional application is a conditional right, which is subject to the existence of a plurality of invention in the parent applications.

The single inventive concept

Another key issue that that arises in this discussion is in respect of multiple independent claims in a patent application: do such claims constitute a single inventive concept, or in other words, do they demonstrate unity of invention? T he single inventive concept is generally understood to be the one special technical feature that is an essential structural part common to all the embodiments of the claimed invention, which is responsible for the inventive effect, and which is absent in the prior art that may provide the same solution. T herefore, a single inventive concept may be recognised between independent claims of different categories, such as a claim for a product, a process specially adapted for the manufacture of the product, and a use of the product

Section 10(5) of the Patents Act allows a single patent application to be filed for a group of inventions that are linked, so as to form a single inventive concept (similar to rule 13 of the Patent Cooperation T reaty). Simultaneously, section 16 provides that for a divisional application to be accepted, the parent application must relate to more than one invention. Section 16 imposes no limitations in respect of the group of inventions linked so as to form a single inventive concept. One  interpretation of section 16 allows a reading of the phrase “more than one invention” as including a group of inventions which may or may not form a single inventive concept. T his issue also came up before the IPAB in LG Electronics, where the Board held that a divisional application can be allowed only if the parent application discloses a plurality of inventions, and the plurality of inventions does not constitute a single inventive concept. T his order severely restricts the law on divisional applications, and limits the allowability of divisional applications to a very small subset of patent applications.

Curbing improper practice

The IPAB also objected to the practice of extending proceedings as followed in the LG Electronics case. Here, the patent applicant did not file a response to the objections raised in the examination report. Instead, the applicant chose to file a divisional application, like a continuation application. In response, the IPAB observed that the practice appeared to be merely to extend examination proceedings, and that the request for a divisional application was in fact a request for an extension of time. Evidently, the IPAB does not seem to find favour with the practice of filing divisional applications as continuation applications.

In Bayer Animal Health v Union of India and Sygenta Participations v Union of India, the applicants Bayer and Sygenta, respectively, filed divisional applications in respect of composition claims, the parent applications for which had not been allowed by the controller under section 5(1) (a) of the Patents Act. T he divisional applications were also rejected by the controller, which led the applicants to appeal before the IPAB. Rejecting this appeal also, the Board held that the basis on which divisional applications were granted was “plurality of invention” alone, and the Patents Act does not empower or give applicants the right to resubmit the same application as a divisional application. It would appear that filing a divisional application in respect of a subject matter previously held non-patentable in the parent application would not be deemed as proper practice under section 16.

More IPAB clarifications to come?

Subsequent to the recent IPAB decisions, a patent applicant can file a divisional application only if the claims of the invention disclosed in the parent application do not relate to a single invention or to a group of the inventions forming a single inventive concept. T he IPAB has also clarified that although an applicant has the right to file a divisional application on their own, this right is subject to the controller’s discretion to allow or disallow such an application on grounds of concerns of the plurality of invention being met.

Furthermore, where claims in the parent application appear to overlap with those in the divisional application, the controller may seek amendments in the complete specification of the divisional application to remove such overlap. In other words, the later application should not include any claim that has already been made in the parent application. Additionally, the matter disclosed in the divisional application should not include any matter that has not been disclosed in substance in the complete specification of the parent application. T herefore, to become eligible as a divisional application under section 16, it is essential that the parent application, from which the divisional application is filed, should disclose more than one invention.

It is entirely possible that this is not the end of the road for IPAB’s clarifications on the subject of 10/17/13 Searching for clarity in India’s divisional applications | Managing Intellectual Property www.managingip.com/Article/3243288/Searching-for-clarity-in-Indias-divisional-applications.html 5/6 Please enter your display name… Please enter your email address… (not displayed) Display this nam e divisional applications. In all likelihood, more challenges on this point of law lie waiting in the wings. Nevertheless, these recent decisions put an end to the simmering ambiguity on the issue, with the IPAB appearing to have adopted a principles-based approach to handling divisional applications: in all the decisions, the IPAB repeatedly stressed the fundamental requirement of demonstrating plurality of invention, in order to obtain a divisional application.