A divisional patent application refers to a child application that derives priority from a parent application but claims subject matter different from the subject matter claimed in its parent application.
In a parent application including a complete specification or a complete specification pursuant to a provisional specification, it is possible there are multiple inventions included in the description or claimed. However, section 16 of Indian Patent Act does not permit multiple inventions to be included in a single patent application. Hence, the need for a divisional patent application arises.
The idea behind a divisional patent application is that if the parent application includes two or more inventions, the parent application should be amended to claim only one invention and the remaining invention(s) should be claimed in separate divisional patent applications (refer above infographic).
What is the priority date of the divisional patent application?
The priority of the divisional patent application is calculated from when the subject matter was first disclosed. This implies that each divisional application enjoys priority of the parent application itself. If there was no provisional specification filed and only a complete specification was filed with the parent application, the filing date of complete specification becomes the priority date of the divisional patent application. If a provisional specification was filed with the parent application, then the filing date of the provisional specification becomes the priority date of the divisional specification provided that the claimed subject matter was disclosed in the provisional specification.
This also means that the term of patent (if the divisional patent application is granted), is same as that of the parent application – 20 years from the earliest filing date.
Now let us understand section 16 of Patent Act in a bit more detail:
Section 16(1) of Patent Act: Timeline of filing divisional patent application and its triggers
Section 16 (1) of the Indian Patent Act reads as follows:
“(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.”
Explanation of section 16(1):
Section 16(1) indicates that the divisional application can be filed by the applicant:
- On their own accord – This could be done when the applicant realises that there are different inventions in the parent application and wants to claim each invention as a separate application.
- To address objections raised by the Controller – During examination, the controller may point out that there are multiple inventions in the parent application. The applicant may then be prompted to separate out each invention as a separate claim set of a corresponding divisional application.
Timeline of a divisional patent application
A divisional patent application should be filed anytime before the grant of the parent application.
Section 16 (2) of Patent Act: Cognate provisional applications
Section 16(2) of the Indian Patent Act reads as follows:
“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.”
Explanation of section 9(2):
The principle of filing a divisional application is that the subject matter/description section of the divisional specification should be the same as that of the parent application. Therefore, the divisional application cannot include any ‘new’ subject matter that was not already disclosed in the parent application. The divisional application can only include a new claim set stemming out from the description of the parent application and claiming a separate invention than what is claimed by the parent application.
Section 16(3) of Patent Act: Conversion of complete to provisional application
Section 16(3) of the Indian Patent Act reads as follows:
“(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.”
If you have understood the meaning of divisional applications, this subsection follows logically from the above explanation. It simply means that if the divisional application includes any claim(s) that is overlapping with the claims of the parent application and vice versa, the Controller may require the applicant to remove any overlapping claims.
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