Coming down heavily on the habit of filing further divisional applications related to a main patent, the country’s patent office has said it was nothing but an “undesirable” practice of keeping a patent application alive beyond a certain time limit to the advantage of the applicant and to create “uncertainty” over the status of the patent in the
marketplace.
The Mumbai patent office further said in its order that such “uncertainty” was against public interest and it also results in abuse of the provision of Section 16 of the Indian Patent Act.
The patent office also pointed out that filing further divisional applications out of divisional applications leads to prolonging of the examination period, thereby forcing the competitors to deter in a
significant way.
Suhas Kulkarni, assistant controller of patents & design, Mumbai, while rejecting a divisional application by the Swedish pharma major AstraZeneca which was based on yet another divisional application, said Section 16(1) does not bar persons from filing a number of applications based on the main application for patent, if more than one invention was filed in the same. The applicant has an option to file several further applications based on the first filed application (parent), but it is not possible to generate more applications from the divisional application, as it results in prolonging the examination and leads to uncertainty over the status of application for the patent.
AstraZeneca had filed the patent application titled ‘Process for the preparation of Cyclopropyl Carboxylic acid esters and derivatives’ in 2010. According to the Mumbai patent office, the application was a divisional application of an application filed in 2006, which itself was divided out of the original application in 2002.
“Therefore, the instant application is divided out of the already divided application, the same is objected on the ground that the Patents Act does not provide provision for the divisional out of the divisional application as per the provision of Section 16 of the Patents Act,” the assistant controller said.
Under Section 16(1), an applicant may, at any time before the grant of a patent, if he or she so desires, or with a view to provide remedy to the objection raised by the controller on the ground that claims of a complete specification related to more than one invention, may divide the application and file further application in respect of invention disclosed in the provisional or complete specification
already filed.
The examination of a divisional application is always done vis-à-vis the main application. If two or more divisional applications are filed based on a main application, examination of the second or subsequent divisional application shall be done vis-à-vis the main application to avoid double patenting.
