When your patent application contains more inventions than the as-filed claims cover, or if multiple inventions are disclosed, filing of a Divisional Application works as the best strategic tool to secure the complete protection of the invention disclosed. You can file a Divisional Application to ensure each invention in the patent disclosure is adequately protected. Divisional Application can be defined as, a further application divided out of the first- mentioned patent application.
Filing a divisional application ensures all inventive aspects of the disclosed invention are safeguarded, preventing any from being overlooked or unprotected, thereby maximizing the scope and strength of your intellectual property rights.
Section 7. Form of application. —(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
It is essential to note that the latest Patent (Amendment) Rules, 2024 on March 15, 2024, aligned with the landmark ruling Syngenta Limited v. Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 471/2022 (Judgement dated 13 October 2023), transformed the Indian patent regime for divisional patent filing by introducing Rule 13 (2A), to streamline procedures, allowing multiple further divisional applications under section 16. Interestingly, this amendment has been incorporated in linea cum the landmark dictum. The rule Rule 13 (2A) reads
“A patent applicant may, if he so desires, file one or more further applications under section 16, including in respect of an invention disclosed in the provisional or complete specification or a further application filed under section 16.”
This rule amendment aligned with the Division Bench that ‘while plurality of inventions is required to file a divisional application, the plurality can be ascertained from the provisional or complete specification and need not be mandatorily restricted to the claims’.
Advantages of filing a Divisional Application:
- Securing filing date of the parent application, an inventor secures the earliest possible date for their invention, providing legal protection against potential competitors.
- a parent application followed by divisional Application allows the inventor to disclose their invention to the public while preserving the right to file additional applications
- each individual invention received independent protection
- Enables inventors to pursue at least certain set of claims in case of any challenges to the co-pending applications/parent Application
Let us explore the crucial features, facts, and requirements of the divisional patent Application filing:
When can you file a Divisional Application?
at any time before the grant of a patent (Section 16 (1))
Is cross- referencing required?
With reference to Rule 13(2), A specific reference to the number of original application from which the divisional application is made is required.
How many number of Divisional Applications can be filed?
The applicant can now file one or more divisional application(s) under Section 16 (There is no limit).
What is the Appropriate office for filing the divisional application?
According to Rule 4 (5), the divisional application shall be filed at the appropriate office of the first mentioned application only.
What is the Priority date of divisional Application, date of filing and patent term?
Referring to Section 16 read with Explanation Section 11(4) Priority date of the claim(s) is the date of filing of the first mentioned application (Section 11(4)). The date of filing of a divisional application shall be the same as that of the first mentioned application, from which it has been divided.
The term of a divisional patent is twenty years from the filing date of the first mentioned application or the international filing date under PCT.
How to differentiate the divisional Application from parent/original application?
The claims in a divisional application are narrower/different in scope compared to the claims in the parent application.
Support of the Divisional Claims
The applicant can file one or more divisional application(s) under Section 16 based on an invention disclosed in the provisional specification or complete specification or any previously filed divisional application. (amendment Rule 13 (2A)).
Can the scope of claims divisional Application be broader than that of the claims of parent application? Whether amendments to the specification are required/allowed?
The Indian Patent Office requires the original application’s reference number in the Divisional Application specification. This reference in respect of Divisional Application is the application number and filing date of the of the first mentioned application.
The scope of claims can be broader than that of the parent Application claims. Referring to Section 16(2), 16(3), the divisional Application scope however cannot be broader than that of the original application in terms of the disclosure. That is, complete specification of the divisional application shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.
Divisional application claims must be based on the first mentioned application’s claims. Adding claims outside the scope of the original claims is not allowed.
What are the scenarios that lead to a Divisional Application:
- When an initial patent application covers multiple independent inventions
- Objection based filing: as a response to the Unity objection raised by the Controller in the Examination
- Voluntary Filing: as a proactive measure, strategic filing of the divisional application, taking into account the commercial benefits of each aspect of the IP portfolio.
Precautionary measures while filing the Divisional application: (See MPPP)
Power of Attorney: If the initial application authorizes a patent agent to act on behalf of the applicant, no new power of attorney is needed for divisional applications. Without such authorization, a new power of attorney must be filed for divisional applications.
Proof of right: A new proof of right is not required while filing a divisional, if the applicant has submitted the proof of right in the prescribed.
Examination:
The criteria for Examination may involve measure objections such as:
- The Controller may raise the objection of double patenting, therefore, the divisional must not contain claims overlapping with the parent application
- The Divisional Application must adhere to the unity of invention requirements
- Novelty and Inventive Step: The divisional Application is Examined independently and therefore, novelty and inventive step criteria similar to any complete application apply.
- Sufficient Disclosure: The disclosure of the complete application should involve sufficient support to the claims to enable a person skilled in the art to carry out the invention.
In accordance with Rule 24- B(1)(iv), the request for examination of application as filed according to the sub-section (3) of section 16 (Divisional application) shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later.
Examination of a divisional application is always done in relation to the first mentioned application. If two or more divisional applications are filed, examination of subsequent ones will consider the first mentioned application and any previously examined divisional applications to avoid double patenting.
Therefore, it is essential that the two co-pending applications do not overlap with the scope of the principal claims to avoid double patenting. (When two or more patents are not sufficiently distinct from one another if the same claims or substantially similar claims are made in multiple applications it is considered as doble patenting. Double patenting can lead to an unfair extension of patent protection and is generally avoided by requiring that claims in different applications be sufficiently distinct.)
According to Rule 24B(2)(i), once a request for examination is received and the application is published under Section 11A, it is examined in the order requests are filed and the Controller refers documents to the examiner accordingly. In case of, further application under Section 16 (i.e. divisional application), it follows the same reference order as the first application. If the first application is examined, the further application must include a new request, be published within one month, and be referred to the examiner within one month of publication.
Patentability Criteria of Divisional Patent over parent patent:
Divisional Application is Substantive Application as:
- separate fee(s) is required to be paid
- separate request for examination requires to be made
- it can be prosecuted separately; and
- it results in an independent patent.
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| Example of Original Claim Parent Application:
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Example of Divisional Claim:
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| A polypropylene composition for packaging comprising:
70-90% by weight propylene, 5-15% by weight ethylene, and 5-15% by weight of a polymer additive to enhance durability. |
A temperature resistant polypropylene composition for packaging comprising:
80% by weight propylene, 10% by weight ethylene, and a temperature resistant additive.
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In conclusion, filing a divisional patent application can affect how you manage and protect your patent rights. With the new Patents (Amendment) Rules, 2024, introducing rule 13(2)(A), the opportunities to file divisional applications has expanded while securing the original priority date thereby enhancing Flexibility for the Applicant. Knowing the appropriate action is key for maximizing benefits and ensuring compliance-please connect with us for more information.
