The presence of multiple inventions in a parent application is an essential criterion for granting divisional patents in India. Divisional applications can be filed at any time before the grant of the parent application either voluntarily or in response to an objection based on lack of unity during the examination of the parent application.
In the case of voluntary filing of divisional applications, if the patent office objects on the grounds of double patenting at the time of examining the divisional application, the burden of proof for establishing the presence of multiple inventions in the parent application lies with the applicant. When the patent office identifies multiple inventions and raises an objection in the examination report of parent application, such an objection can be overcome by explaining the unity of invention or electing one group of claims for the parent application so that the non-elected groups can be pursued through one or more divisional applications.
It is generally advisable to file divisional applications as soon as possible because there is no provision for a notice of allowance in India and the sudden grant of a patent after filing a response to the examination report for the parent application can result in loss of the opportunity of filing divisional applications on claims that may be patent eligible. While most patent applications go through an oral hearing in India, implicitly providing one more opportunity to file divisional applications, it is best to file divisional applications at the earliest opportunity, i.e. before or at the time of responding to the examination report for the parent application.
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Joginder Singh is an associate partner at LexOrbis.
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