Getting to grips with divisional applications

Patent applicants need to take care to ensure their rights are not rejudiced, say Deepak Sriniwas and Vivek Kashyap at Lex Orbis

A recent order of the Intellectual Property Appellate Board (IPAB) said: “The basis of a divisional application is the existence of a plurality of invention. This is a sine qua non for seeking a division of an application.” The order, which concerned an application filed by Bayer Animal Health, was in line with a previous decision in an appeal filed by LG Electronics.

Bayer Animal Health filed a patent application on 14 February 1997. A first examination report (FER) issued on 2 July 1999 objected to a patent for the product per se as it was not patentable under section 5(1)(b) of the Patents Act, 1970. On 10 September 2001 the application was deemed to have been abandoned as there was no response to the FER.

Subsequently, a divisional application was unsuccessfully filed on 28 October 1999. FERs issued on 20 September 2007 and 8 September 2008 had found it not valid under section 16 of the act. Bayer had responded to both FERs.

A hearing followed on 17 November 2008, but the divisional application was dismissed by the Indian Patent Office (IPO) in an 8 May 2009 order that said it did not satisfy section 16. An unsuccessful appeal to the IPAB followed. While observing that claims in both the divisional and parent applications were directed towards the same invention, the IPAB had corrected the IPO’s observation that the claims of the parent application constituted “plurality of the invention”.