The Intellectual Property Appellate Board (‘IPAB’) has recently passed a notable decision with respect to divisional applications by referring to the relevant provisions of the Patents Act, 1970 (‘Act’), Patent Cooperation Treaty and legal precedents. Owing to different practices adopted by the applicants and the Indian Patent Office (IPO), in the interest of justice and for the sake of uniformity of practice, the IPAB in this case Esco Corporation v. The Controller of Patents & Designs,[1] also listed certain guiding principles to address this issue.

Facts and background

In the instant case, Esco Corporation (‘Appellant’) filed a divisional application vide Patent Application No. 8094/DELNP/2008 for its invention titled ‘RELEASABLE COUPLING ASSEMBLY’ on 25 September 2008 (‘divisional application’). This application was divided out of a previously filed patent application vide Application No. 4702/DELNP/2005 (‘parent application’).

There were originally 56 claims that were filed in the parent application i.e., claims 1-40 related to ‘wear assembly,’ claims 41-52 related to ‘wear member,’ and claims 53-56 related to ‘a method of attaching a wear member to a support branch.’ The claims were amended via Form-13 to retain only 34 claims.

In the first examination report (‘FER’) of the parent application issued on 16 May 2008, the Respondent objected to claims 20-34 as being inconsistent with claim 1. It stated, ‘in view of the plurality of independent claims, the nature of the invention is not fairly ascertained.’ This caused the Appellant to file the instant divisional application with the claims 20-34.

Subsequent to filing its divisional application, the Controller of Patents & Designs (‘Respondent’) issued an FER on 6 June 2014. The Respondent, in the FER for the divisional application, objected specifically to claims 13-15 (original claims 32-34 from the parent application) relating to ‘wear member,’ on the grounds that it was not in accordance with Section 16(3) of the Act. The Appellant filed its response to the FER on June 5, 2015, whereby it further amended its claims to retain only claims 13-15 as claims 1-3 in the instant application. On 4 April 2016, a hearing took place and thereafter, the Appellant submitted its written submissions.

Despite these various amendments, the Respondent, stated that the claims 1-3 in the divisional application were not within the scope of the originally filed claims. It also opined that the amended claims 1-3 did not form a distinct invention, were not compliant with Section 16(3) of the Act, and consequently maintained the divisional application to be illegitimate ab initio and refused to grant the patent.

The Appellant submitted that claims of the divisional application related to a wear member for excavating equipment used in construction sites, while the granted claims in the parent application related to a wear assembly for excavating equipment. As the invention claimed in the divisional application was distinct and different from the invention in the parent application, and was within the scope of the invention disclosed, the divisional application was entitled to be granted patent protection.    

However, the Respondent subsequently issued an order refusing the grant of the patent (‘impugned order’). The present appeal was filed by the Appellant under Section 117A of the Act, who asserted the claims of the divisional application to be distinct from that of the parent application, and the Respondent’s rejection of the claims due to non-compliance of Section 16 of the Act to be incorrect.

Analysis and decision

The basis of filing a divisional application is derived from Section 7 and 10(5) of the Act. The provisions provide for one invention per application or one application one inventive concept (OAOIC), i.e., no two inventions can be allowed in a single application unless they conform to a single inventive concept, or, in other words, possess unity of invention. In addition to the above, the applicant should also be able to establish the lack of unity of invention to file a divisional application.

Section 16 of the Act provides for the filing of a divisional application either suo motu or to rectify an objection on account of lack of unity of invention as per Section 10(5) of the Act. The criteria for filing a divisional application includes plurality of inventions, the invention so claimed in the divisional application must be distinct from the invention claimed in the parent application but also within the scope of the invention disclosed in the parent application, and the divisional application cannot include any claim which has not been disclosed in the parent application.

Furthermore, Rule 13 of the Patent Cooperation Treaty (PCT) states that the requirement of unity of invention would be fulfilled only if a technical relationship existed amongst the claimed inventions. The determination as to whether a group of inventions is linked to form a single inventive concept would be made without any regard as to whether the inventions were claimed in a separate claim or as alternatives within a single claim.

In the instant case, the IPAB found the original claims as filed in the parent application to have possessed a unity of invention, which in turn did not require the Appellant to have filed a divisional application. However, the Appellant had acted on the Respondent’s objections in the FER, and filed a divisional application to rectify the objection of the lack of unity of invention.

Recent IPAB Orders

The IPAB made reference to recent orders to reconfirm its stance on divisional applications. In L.G. Electronics v. The Controller of Patents,[2] the IPAB had held that if the claims of an invention disclosed in one application did not relate to a single invention or to a group of inventions forming a single inventive concept, the applicant would be entitled to file a divisional application. The Controller would have to ascertain the existence of plurality of inventions in the parent application and if the Controller found any overlap of claims in the parent and divisional applications, it could direct the applicant to amend the specifications of the divisional application. 

Similarly, in Novartis v. Union of India,[3] the Supreme Court of India distinguished between claims and disclosures made in a patent application. The Court reiterated that the purpose of patents was to grant an individual a monopoly in exchange for the invention being made known to the public, so that at the end of the patent term, the invention would belong to the public who could benefit from the same. It was settled that a claim or the coverage in a patent could not go beyond the disclosures made in the patent, as it would surpass and negate the fundamental principles of granting patents.

Lastly, in The Procter & Gamble Company v. The Controller of Patents,[4] the IPAB restated that a divisional application could be filed only when the claims in the parent application related to more than one invention (the sine qua non of filing a divisional application), and the divisional application could not include a claim for any subject matter not claimed in the parent application.

Besides reiterating the pre-requisites and manner of filing divisional applications, the IPAB also stipulated that where two or more divisional applications were filed, the examination of the subsequent divisional application/s would have to be done in relation to the parent application and the first divisional application to avoid double patenting.

The IPAB also affirmatively answered the often ambiguous question of whether divisional of divisional applications were permissible under the Act. It held that claims of divisional of divisional applications would be allowed provided it abided by the same criteria of filing a divisional application from a parent application.

IPAB’s guiding principles regarding divisional applications

In consideration of relevant provisions of the Act, the PCT, and precedents, the IPAB formulated points that ought to be adhered to whilst dealing with divisional applications:

1. A divisional application can be filed by an applicant either suo motu or to remedy an objection raised by the Controller on grounds of plurality of inventions. In both cases, existence of plurality of inventions in the parent application is essential to file a divisional application.
2. Claims in the divisional application (and subsequent divisional applications) must be based on the parent application but cannot be filed with the same set of claims as the parent application. In the same vein, the complete specification of a divisional application cannot include any subject matter that was not disclosed in the parent application.
3. Examination of a divisional application should be done in relation to the parent application, and further divisional applications must be examined in relation to the parent application and the first divisional application.
4. A divisional application can be filed only on grounds of plurality of invention. If claims are held to be non-patentable due to any other grounds, it is not permissible to file a divisional application for such claims.
5. The primary requirement to file a divisional application is the existence of a valid parent application which cannot be deemed to be abandoned, withdrawn, or refused.
6. A divisional application must be filed before the grant of the patent. Since the date of grant varies from case to case, the applicant will not know for sure until when they will be entitled to file a divisional application. Here, the IPAB suggested the introduction of ‘intimation to grant’ by the Controller to the applicant, which might bring some certainty.

The IPAB also added that during examination, the Controller should take due care to ensure that merely because inventions are claimed as independent set of claims, does not mean that there is a lack of unity of invention. If unity of invention is not ascertained, the Controller can suggest amendments to overcome such objections. Further, if there is a lack of unity of invention, the FER of the first application should identify all such distinct inventions in the first instance to reduce the chance of filing divisional of divisional applications and avoid further legal complications.

Conclusion

In the instant case, the IPAB found the parent application capable of having included claims 1-34 as they all related to a single inventive concept. However, the Appellant had filed a divisional application based on the Respondent’s objections. As in this particular instance, a case of double patenting would not arise, the IPAB suggested the divisional application to be allowed, and accordingly set aside the impugned order.

[1] OA/66/2020/PT/DEL, decided on Oct. 27, 2020.

[2] OA/6/2010/PT/KOL.

[3] Civil Appeal Nos. 2706-2716 of 2013.

[4] OA/47/2020/PT/DEL.