Distinctness leads to division

Vidisha Garg at Anand and Anand explains the significance of a recent decision on divisional applications

India’s patent system has seen several changes as a result of the judicial interpretation of substantive provisions of the Indian Patents Act, 1970. The most recent change is in relation to the filing of divisional applications under section 16. The Intellectual Property Appellate Board (IPAB) has recently allowed the filing of a second divisional application derived out of the first divisional application.

Background

Under section 16(1), a person who has made an application for a patent may, at any time before the grant of the patent, file a further application (a divisional application) in respect of the invention disclosed in the provisional or complete specification already filed in respect of the first-mentioned application (the parent application). The applicant can do this if he so desires or to remedy objections raised by the controller that the claims of the complete specification relate to more than one invention.

According to section 16(2), a divisional application has to be accompanied by a complete specification which shall not include any matter not disclosed in the complete specification filed in pursuance of the patent application. A divisional application is deemed to have been filed on the date on which the parent application has been filed and the term of the said application runs from the date of filing of the parent application.

Vidisha Garg is a partner at Anand and Anand.