More than one Invention being the essential criteria to divide further application from an original parent application

In one of the recent decision, issued on August 22, 2016, under section 15 and 25(1) of the Indian Patent Act for deciding the validity of a divisional patent application, the controller reasserted that the application can be divided only in order to meet the objection/issue of plurality of distinct Inventions. Even the suo moto right of the applicant can be exercised only in overcoming the issue of unity of Invention.

The facts of the case being that a patent application 1228/MAS/1998 (Title: crystal modification of a pharmaceutical active ingredient) was filed on June 5, 1998 while its divisional application 1034/CHE/2007 (Title: "A modification B of the compound 1-(2,6-difluorobenzyl)-1H-1,2,2-triazole-4-carboxamide") was filed on May 15, 2007. The parent application was examined and First Examination Report (FER) was issued on 15^th May, 2006. The applicant did not timely reply to FER, therefore, the parent application was deemed to be abandoned under section 21(1) of the Patents Act, 1970. The divisional application's originally claimed crystal modification B of the compound rufinamide while the parent application claims were related to a crystal modification B, C of the compound rufinamide. The decision stated that the crystal modification of B, crystal modification of C, and method of preparing the crystal modification B are related to same technical relationship. In other words, the Controller held that the divisional application claims (1034/CHE/2007) are mere repetition of the parent application claims (1228/MAS/1998). The Controller also emphasised that there was no objection relating to plurality of distinct invention in the FER of parent application.

The decision by the Patent Office reaffirms that to avail the benefit of section 16 of Indian Patent Act, the issue/objection of more than one invention is the essential criteria. Though the applicant has the right to file a request for divisional application at any time before the grant of patent, the basis of such application has to be plurality of Invention. Thus, the Controller in this case concluded that the divisional application was not maintainable.