Mastering Divisional Patents in India: Strategies for Success


Author: Dr. Teena Momsia, The Dr BhimRao Ambedkar Law University, Jaipur, Rajasthan


To the Point


Divisional patents in India offer substantial opportunities for inventors and businesses to secure their intellectual property. However, navigating the complexities of divisional patent laws can be challenging. To overcome these challenges, applicants should stay informed about legal amendments, draft detailed and clear claims, maintain proactive communication with the Indian Patent Office, and continuously monitor both domestic and international patent landscapes. By adopting these strategies, inventors and businesses can effectively master the process of obtaining divisional patents in India and protect their intellectual property rights.


Abstract


This article offers a comprehensive overview of divisional patents in India, discussing both the benefits and challenges associated with filing such applications. It highlights strategies for successfully navigating the process, such as conducting thorough patent searches, ensuring clarity and distinctness of claims, and collaborating with experienced patent attorneys to effectively manage the complexities of divisional patent law in India. Additionally, it emphasizes the importance of staying updated with legal amendments, drafting detailed and precise claims, and maintaining proactive communication with the Indian Patent Office. By following these strategies, inventors and businesses can maximize the protection of their intellectual property through divisional patents in India.

Use of Legal Jargon


Legal Terms and Sections Related to Divisional Patents in India


Divisional Patent – A divisional patent application is a patent application which is “divided out” from the parent application. It is not possible to introduce new subject matter when filing a divisional patent application, but it is permissible to seek protection for content that was already included in the parent patent application.
Parent Application – A parent application is the initial patent application filed, from which related applications, known as child applications, can stem.


Section 16 of the Patents Act 1970 – It allows a patent applicant to file a divisional application if the parent application reveals more than one invention. The divisional application must be filed before the original patent is granted and within 12 months from the parent application’s filing date. It should include a complete specification without any new matter not disclosed in the original application. The Controller of Patents can require amendments to prevent overlapping claims between the original and divisional applications. The divisional application retains the same filing date as the parent application, preserving the priority date and enabling the separate prosecution of distinct inventions disclosed in the parent application.
Unity of Invention (Rule 6) – Unity of invention is a formal administrative requirement that must be met by the inventor to comply with the provisions of patent law. The principle of unity of invention is a requirement for filing a divisional patent application in India. It states that a patent application should relate to a single invention or a group of inventions that are linked by a single inventive concept.


Patent Specification – A patent specification is a crucial legal document in the patent application process, detailing the invention and how to protect it. It includes various components such as the title, technical field, background, summary, drawings, embodiments, and claims, which collectively describe the invention comprehensively. The purpose of the patent specification is to define the inventor’s claims, explain the invention’s working and usage, outline the scope of the patent’s protection, and describe how the invention addresses a technical problem. This thorough documentation ensures that the invention is clearly understood and legally safeguarded. Section 10 of the Indian Patents Act outlines the “Contents of a complete specification of a Patent Application.” In sub-Section 5, it clearly distinguishes between “what can be claimed” and “what is disclosed in the specification.”


Industrial Applicability [Section 2(1)(ac)] – When filing a divisional patent, the subject matter of the new application must still meet the “industrial applicability” criteria, meaning it must be capable of being used in an industry.


Section 2(1)(ac) of the Patents Act, 1970 in India says that “An invention must be capable of being made or used in an industry, essentially signifying that the invention has practical utility and can be produced on a commercial scale within an industrial setting; it is a key requirement for an invention to be considered patentable.”


Temporal Requirements (Section 16) – Temporal requirements” in the context of a divisional patent mean the specific timeframes within which a divisional patent application must be filed, which in India, according to Section 16 of the Patents Act, 1970, mandates that, “The divisional application must be submitted before the parent patent is granted and within 12 months of the parent application’s filing date; essentially, this ensures the divisional application is filed promptly while still maintaining the priority date of the original invention.”

The Proof


A study conducted by the Indian Patent Office, shows a significant increase in the number of Divisional Patent Applications filed in India in recent years. This trend underscores the growing importance of divisional patents in the country’s intellectual property landscape. This rise in filings is facilitated by Section 16 of the Indian Patents Act, 1970, which allows applicants to file divisional applications to address distinct inventions disclosed in a single parent application.

Additionally, legislative and judicial clarifications have solidified the criteria for the maintainability of divisional applications. Key rulings have emphasized that divisional applications must tackle issues related to the multiplicity of inventions, maintain the priority date, and have claims that are distinct and deducible from those in the parent application. These provisions ensure that divisional applications are effectively linked to their parent applications, securing comprehensive protection for various aspects of the invention. The increasing number of filings illustrates that applicants are strategically leveraging divisional patents to enhance their intellectual property portfolios.

Case Laws


In “Boehringer Ingelheim International GMBH vs. the Controller of Patents (2022)” case is highly relevant to divisional patents as it clarifies the criteria for the maintainability of divisional applications:


The Court held that claims falling outside the scope of originally filed claims but within the scope of the complete specification of the parent application are not allowed. This means that for a divisional application to be maintainable, the plurality of inventions must be reflected in the claims of the parent application. If the additional inventions are not included in the parent application’s claims, the divisional application would not be valid. This underscores the importance of ensuring that all potential inventions are claimed in the parent application, aligning with the strategy of comprehensive protection discussed in the article.

The Court further held that a divisional application cannot be filed solely based on disclosures made in the specification if the plurality of inventions is not mirrored in the claims. This decision emphasizes the fundamental rule of patent law: “what is not claimed is disclaimed.” It means that only the inventions explicitly claimed in the parent application can be the basis for a divisional application. This highlights the need for clear and distinct claims, which is a key strategy for mastering divisional patents in India.

In the “Bayer Animal Health Gmbh vs. Controller of Patents & Designs (2022)” case, Bayer Animal Health Gmbh filed a divisional patent application based on their earlier parent application. The Indian Patent Office raised objections, citing non-compliance with Section 16 of the Indian Patents Act. Bayer appealed against the Controller’s decision, arguing for the validity of the divisional application and emphasizing that it should be treated separately from the parent application. This case underscores the importance of adhering to legal requirements for divisional patents and highlights the challenges faced during the examination process. The present case is also demonstrating the critical need for precise claim interpretation and compliance with procedural requirements to successfully navigate the complexities of divisional patent applications in India.

The “Syngenta Participations AG v. Union of India (2023)” case refers to a legal case in India where Syngenta challenged the patent office’s interpretation regarding divisional applications, arguing that a divisional patent application can be filed based on disclosures in the parent application’s provisional or complete specification, even if those inventions weren’t explicitly claimed in the original patent claims. This effectively overturned a previous ruling in the “Boehringer Ingelheim” case. The central issue revolved around the conditions under which a divisional patent application can be filed, specifically whether it needs to be based solely on claims present in the parent patent or if disclosures within the specification can be used even if not explicitly claimed. This decision has significant implications for patent law in India regarding the filing of divisional applications. This decision highlights the importance of ensuring that the parent application explicitly discloses multiple inventions. It emphasizes the need for careful drafting of the parent application to include clear, distinct inventions to successfully file a divisional application, aligning with the article’s guidance on navigating the complexities of divisional patents in India.

Conclusion


Mastering the intricacies of divisional patents in India requires a strategic approach and a thorough understanding of the legal framework. By conducting comprehensive patent searches, ensuring clarity and distinctness of claims, and adhering to the temporal requirements outlined in Section 16 of the Indian Patents Act, applicants can effectively navigate the complexities of divisional applications. Filing a divisional patent allows inventors to claim multiple inventions disclosed in the original (parent) application, ensuring broader protection of intellectual property. Divisional patents also provide an opportunity to refine and narrow claims, making them more specific and potentially stronger against challenges. Furthermore, they extend the scope of protection for different aspects of the invention, which might not be possible in a single parent application.
However, challenges include compliance with temporal requirements, as the divisional application must be filed within 12 months from the parent application’s filing date, requiring careful monitoring of deadlines. Ensuring that the claims in the divisional application are clear, distinct, and non-overlapping with those in the parent application can be complex. Navigating the legal and procedural requirements, such as adhering to Section 16 of the Patents Act and maintaining unity of invention (Rule 6), can be daunting without experienced patent attorneys. Collaborating with experienced patent attorneys and maintaining proactive communication with the Indian Patent Office further enhances the chances of success.
The highlighted case laws underscore the importance of addressing multiple inventions disclosed in a parent application and complying with legal standards to secure robust intellectual property protection. By implementing these strategies, inventors and businesses can maximize the benefits of divisional patents, ensuring comprehensive and strategic protection of their innovations in India’s evolving intellectual property landscape.

FAQS


Q1: What is a divisional patent application?
A1: A divisional patent application is filed when a parent patent application discloses more than one invention. It allows the applicant to separate distinct inventions into individual applications, ensuring each invention receives proper protection.


Q2: When can a divisional patent application be filed?
A2: A divisional application must be filed before the grant of the parent patent and within 12 months from the filing date of the parent application, as outlined in Section 16 of the Indian Patents Act, 1970.


Q3: What are the benefits of filing a divisional patent application?
A3: Filing a divisional patent application allows for the protection of multiple inventions disclosed in a single parent application, refinement and strengthening of claims, and extended scope of protection for various aspects of the invention.


Q4: What are the challenges associated with filing divisional patent applications?
A4: Challenges include meeting the temporal requirements, ensuring clarity and distinctness of claims, and navigating legal and procedural complexities. Compliance with Section 16 and maintaining unity of invention (Rule 6) are critical.


Q5: What strategies can help in mastering divisional patents in India?
A5: Strategies include conducting thorough patent searches, ensuring clear and distinct claims, adhering to temporal requirements, collaborating with experienced patent attorneys, and maintaining proactive communication with the Indian Patent Office.

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