A divisional application can be filed either voluntarily or in response to an objection by the Indian Patent Office (IPO). Indian courts have held that the presence of multiple inventions in the parent application is a necessary criterion for divisional applications. Filing a divisional application with the original set of claims just to extend the prosecution process is considered a malpractice by the IPO and, therefore, may not serve the intended purpose.
Timing: A divisional application in India can be filed at any time before the grant of its parent application. However, there is no provision to demand issue fees from the applicant or send an advance notice to the applicant about the decision taken by the IPO.
A sudden decision by the IPO to grant a patent after filing a response to a first examination report (FER) actually forecloses any opportunity for the applicant to file a divisional application. In case an objection remains outstanding after filing a response to the FER, the IPO has to issue a hearing notice to the applicant before taking any adverse action in the matter. The oral hearing process extends the time window to file the divisional application. However, since an extended time window cannot be guaranteed as a patent may also be granted within a few days after filing the response to FER, it is better to file a divisional application as early as possible.
Fees and examination: There is no provision to delay the payment of the filing fee for a divisional application or file the divisional application without claims to save the claim fee at the time of filing. In fact, in most cases, the request for examination (RFE) along with examination fee needs to be filed with the divisional application.
Divisional filing prompted by IPO: Filing of divisional applications in response to an objection by the IPO is quite straight forward. As a preferred practice, a divisional application may be filed for one or more of non-elected groups.
Deferring the filing of further divisional applications may pose difficulties for the applicant in pursuing them later in cases where the parent application is granted.
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Joginder Singh is an associate partner with LexOrbis.
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