Continuation of a parent patent application, even after the examination of the original patent is over, remains a fallback option at the hand of the patentee to keep the patent application alive. Usually, the divisional (under section 16) and the additional application (under section 54) fall under this category of applications that stem from a parent application. Both of these types of applications allow the inventor to modify different aspects of the original application or patent by submitting a new application that claims the benefit of the parent, as well as its filing date.
In both situations, the original application should be a non-provisional one. It is pertinent to know that none of these so-called 'continuation applications' may be applied to a provisional application, as the only application that may claim the benefit of a provisional application is the subsequent complete specification. In any case, the division of the parent application allows the applicant to claim the right to further examination of the application. However, the right of the Suo moto division of the application remained a grey area in the patent jurisprudence in India as the interpretation of section 16 is undergoing a restructuring process.
Relooking at Section 16
Let's relook at the provisions of section 16 again.
"(1) A person who has made an application for a patent under this Act may, at any time, before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller, on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application."
What emerged from the plain reading of section 16 (1) is that a Suo moto application or consequent to an objection raised by the Controller, a divisional application can be filed:
- Any time before the grant
- on the ground that the claims of the complete specification relate to more than one invention
- in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first-mentioned application
The overall impact of such a request for division remains the same, i.e., the further application shall proceed as a substantive application, and it may be examined when the request for examination is filed within the prescribed time. It means if the division is permitted, the applicant gets a right to have this divisional application examined further and beyond the limits of the last date set by the First Examination Report of the parent application. The purpose of the division of the application is administrative as it allows the Controller to check the grant of a patent for two inventions in one application, thus preventing loss of revenue to the patent office.
The Controller is mandated by Section 46(2) to ensure that "A patent shall be granted for one invention only". This mandate provides the statutory authority to the Controller to look into the unity of invention requirement and take a stand on the division or otherwise of the application. Mind you, once the Controller decides the question of unity, it is final, and the proviso to section 46 (2) clearly bars any person in a suit or other proceedings to take objection to a patent on the ground that it has been granted for more than one invention.
Position of Divisional Application after IPAB
The earlier decision of the IPAB on section 16 refusal was limited to meeting the administrative purpose of division if the applicants did not establish the plurality of distinct. In certain applications, the division was refused as it was found to be merely an attempt by the applicants to keep filing divisional applications, even when the original application was refused on the grounds of being for a product not allowed at that time.
In the LG Electronics Inc. case, IPAB observed that 'The purpose of the division is to divide not to revive the refused application. The requirement of plurality of invention is an essential element of section 16 to allow division. "In a latter case, IPAB allowed the Suo moto division of Milliken application with a new set of claims in the first divisional application. In Milliken's case, IPAB had an opportunity to look into the Controller's refusal of the divisional application again. In this case, the applicant had further divided the first divisional application when the Controller disallowed a new set of claims through the amendment of the claims.
The IPAB categorically stated that the Controller could not deny the further division through the motion of the applicant when the first division was done at the Controller's instance. The IPAB, in this case, held that in the absence of any other remedy to pursue the disallowed claims, the filing of the second divisional application is valid.
Linking Division to the Distinct Invention in Claims after Boehringer
If we see the pattern of refusal of divisional applications later, we find that the division filing after the refusal of the product stopped, and so was the refusal of the division initiated due to the objections raised by the Controller. But none of these refusals of division applications related to the suo moto division of the original application initiated by the applicant until the refusal of the Boehringer Ingelheim International GMBH application by The Controller of Patents. Even the appeal in this case was dismissed by the Court on the grounds that:
"28. From the above provisions, it is clear that a divisional application under Section 16 of the Act has to be an application which arises from a parent application disclosing a "plurality of inventions". In Section 16(1), the phrase "the claims of the complete specification relating to more than one invention makes this position clear. Section 16(3) also makes it clear that there cannot be duplication of the claims in the two specifications, i.e., parent specification and the divisional application."
In Boehringer Ingelheim, the position in law came to be propounded as to mean that to ascertain the plurality of distinct inventions, the Controller must look for distinct inventions embedded in the claims only. Simply stated, the plurality of an invention must reside in the claims of the complete specification.
Linking Division to Disclosure Dedication Rule
Though the division means the division of application in view of the plurality of invention as claimed, in fact, at times, it boils down to the application of what is not claimed in the parent application and cannot be claimed in the divisional application. If the applicant inadvertently missed claiming the second invention in the claims, whether section 16 allows him to Suo moto file a divisional application relating to the invention disclosed in the provisional or complete specification but not claimed. If we see the application of the disclosure dedication rule, we find that what is not claimed stands disclaimed as per the disclosure dedication doctrine recited in the English infringement dispute between Electric and Musical Industries Ltd. et al. vs. Lissen, Ltd. et al.
"The function of the claims is to define clearly and with precision the monopoly claimed so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document, but the forbidden field must be found in the language of the claims and not elsewhere. It is not permissible, in my opinion, by reference to some language used in the earlier part of the specification to change a claim which by its own language is a claim for one subject matter into a claim for another and a different subject matter, which is what you do when you alter the boundaries of the forbidden territory. A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims. "
The Controller respondent in the Syngenta case applied the disclosure dedication rule to refuse Suo moto division of application, brushing aside the clear disclosure of distinct inventions in the patent specification, including provisional. However, DB in Syngenta vs Controller of Patents [C.A.(COMM.IPD-PAT) 471/2022] ruled that the application of disclosure dedication may be relevant in infringement analysis. Still, it has no application to the subject of divisional filing and claim drafting. DB ruled that
"There thus does not appear to be any justification to impute the principle of "what is not claimed is disclaimed" to discern the scope of Section 16. It is more so when the language of Section 16 in clear terms requires the plurality of inventions to be gathered from disclosures made either in the provisional or the complete specification."
Takeaways
The division of an application must meet the requirement of the plurality of exitance of distinct inventions either in claims or in the complete specification, including the provisional specification. The Suo moto division of an application is allowed if the applicant proves that the plurality of distinct inventions subsists in the claims or the disclosure of the specification. Does this mean that the applicant gets an opportunity to claim what is not claimed, or does it only allow the applicant to get an additional opportunity to establish a right to further examination?
Only time can tell whether the question of added subject matter would hunt the divisional application. We may keep our fingers crossed on this issue at this stage. But one thing is certain after the Syngenta DB case: Suo moto division of an application is allowed irrespective of the plurality of distinct inventions in the claims. The disclosure of the distinct inventions in the patent specification is sufficient to establish the right of the applicant to get a right to further extended examination. A cautious division of an application warrants an expert opinion. It is more so if the Suo moto division of application requires an early stage of examination.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
