Patent Filing in India – Divisional Application

Unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent.

According of sub-section (1) of section 16 of the Patents Act, 1970, “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”.

The essential purpose of divisional application is to protect rights of the applicant in case there is more than one invention disclosed or taught in the complete specification.

Important facts about Divisional Application (in India)

  • Divisional Application(s) can be filed at any time before grant of a patent (Parent application)
  • Priority date for Divisional Application(s) is same as that of Parent application
  • Term of Divisional Application(s) is 20 years from date of filing of Parent application or International filing date (in case application is divided out of National Phase application under PCT)
  • Divisional Application(s) is a substantive application with separate application number, Fee(s), request for examination, prosecution etc.
  • Complete specification of Divisional Application(s) must contain a specific reference to Parent application number
  • Divisional Application(s) cannot include any new subject matter over the Parent application
  • Claim(s) of Divisional Application(s) must be different from Parent application
  • Examination of Divisional Application(s) is done vis-à-vis Parent application to avoid double patenting

Section 16 of the Patents Act, 1970: Power of Controller to make orders respecting division of application—(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.

(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

(3) The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.

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