IPAB holds claims of divisional must be derived from claims of parent (not just from specification)

INDIA: IPAB holds claims of divisional application must be derived from claims of the parent application and not merely from the specification of the parent application

In yet another important ruling, The Intellectual Property Appellate Board vide its recent order [OA/3/2015/PT/MUM: UCB PHARMA S.A. v. THE CONTROLLER GENERAL OF PATENTS & DESIGNS & THE ASSISTANT CONTROLLER OF PATENTS & DESIGNS] has pronounced on the validity of a divisional application- this time dealing with cases where new claims are added from the specification.

The IPAB has held that where claims of the divisional application were not present in body of the claims of the parent application and were rather added from specification of the parent application, the divisional application is not maintainable.

As per current legal position and practice, a divisional application is allowed only for distinct subject matter. The important case law in this regard is the IPAB's decision in the LG Electronics case (OA/6/2010/PT/KOL), which was passed almost a decade ago. In the LG Electronics Case, the IPAB adopted the stance that the existence of plurality of inventions is a sine qua non for grant of divisional status.

The present decision is issued in an Appeal against a Controller’s decision where the Indian Patent office refused Indian patent application number 1765/MUMNP/2007 of the Appellant on the ground that the claimed subject matter lacked inventive step and does not constitute a valid divisional application under Section 16 of the Act.

The IPAB has held that "addition of new claims from the description, which were not present in the body of the parent claims, cannot form part the divisional application, as per the teachings of section 16 of the Patents Act". In effect, the IPAB has held that the provisions of section 16 allows only for filing divisional applications if there are claims relating to more than one invention in the originally filed parent application and if these claims cannot be linked to form a single inventive concept. The IPAB's decision is closely aligned with the latest version of the Manual of Patent Office Practice and Procedure which can be accessed here.

OUR RECOMMENDATION:

We do not agree with the IPAB’s interpretation of Section 16 in respect of the basis of divisional applications. In our opinion, Section 16 allows an applicant, if he so desires, to 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 limitation read into Section 16 by IPAB is only with respect to cases where the applicant files a divisional application 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. Such limitation should not have been read into the whole language of Section 16.

We shall closely monitor whether the Appellant challenges the present decision in Court and shall provide further updates as and when further orders are passed by the Court.

Please feel free to direct your queries to the author Ms. Shivarpita Nailwal, Partner shivarpita@iprattorneys.com