For patent attorneys, filing and prosecuting patent applications in foreign countries can be a fraught process. Each country has its own unique set of patent laws, which, though largely similar to one another, include small differences that can have a profound impact on the patenting process. One significant area in which the patent laws of different countries differ is divisional practice. While some countries such as the United States have highly permissive continuation and divisional paradigm, other countries such as India are more restrictive.
Divisional practice in India always had its challenges. For example, aside from cases in which a unity rejection is raised, the window for filing a divisional application in India can close unexpectedly. That is, while divisionals may be filed any time before the application is granted, applications may grant without warning, sometimes in the first examination report. In such cases, the divisional window may close unexpectedly, leaving applicants without further recourse.
To make matters more complicated, it has come to our attention that certain provisions relating to divisional filings have recently been interpreted in a manner that is not particularly beneficial for patentees. One such interpretation relates to what subject matter may form the basis for a divisional filing. In particular, a divisional application must be based on the claims of the parent application, and not merely the disclosure. That is, a divisional application filed to pursue subject matter that was disclosed in the specification but not claimed would be considered improper. This heavily restricts what can be pursued in a divisional application, as applicants cannot mine a specification for unclaimed inventive concepts to pursue in a divisional application as they can in other countries.
The ramifications for already-filed applications in India are considerable, as the possibilities for divisional applications may already be gone—anything not already in a pending claim set may be prohibited from a divisional application. For new applications, though, applicants may be able to preserve divisional opportunities by drafting claim sets that include all the claims they may want to pursue in later divisionals. In such cases, divisionals directed to the intended claims may be filed by the applicant sua sponte before the patent grants, or in response to a unity rejection from the Indian Patent Office.
One may be tempted to file applications in India with multiple claim sets, cancel all but one claim set in a voluntary amendment, and file divisionals to the cancelled claim sets at a later time. But another wrinkle may limit the usefulness of even this strategy. In particular, in India, unclaimed material in a patent application, including material in cancelled claims, may be considered disclaimed and open for public use. Accordingly, if a divisional application includes claims that have been cancelled from the parent application, the Patent Office may disallow the divisional because those claims have been “disclaimed” by the applicant by virtue of their cancellation.
To improve the odds that a divisional can be filed, an applicant would have to file any desired divisionals with claims that are currently claimed in the parent application, before those claims are cancelled from the parent application, and before the application is granted (which may occur in the first examination report). This means that the applicant must establish their divisional strategy at the time of filing the parent application and make any divisional filings relatively early in the examination process.
Of course, divisional applications can also be filed if a multi-invention claim set is subject to a unity objection by the Patent Office. However, the need to file any such divisionals early in prosecution remains. In particular, if an examination report identifies a lack of unity in a claim set, divisional applications to the distinct inventions would need to be filed by the deadline set forth in the examination report. If they were instead cancelled from the parent in an effort to “preserve” them for a later divisional filing, the later filing could be barred as being directed to claims that had already been disclaimed. Thus, whether divisional filings are made by the applicant’s own accord, or in response to a unity objection, the applicant should be prepared to make any divisional filings early in prosecution and likely while the claims are still pending in the parent application.
Even if all of the procedural requirements are satisfied, a divisional application may be prohibited if the claims are not sufficiently different from the parent application’s claims. In particular, divisional applications are only permitted in India if there are a plurality of inventions in the parent application. Accordingly, if an applicant files a divisional on their own accord, but the divisional claims are deemed to be directed to the same invention as the parent application, the divisional may be deemed improper. Care should therefore be taken when crafting claims and applications for filing in India where divisionals may be desired, as claims that one expects to patent in a divisional may be lost if those claims are not considered to be directed to a different invention than the parent application’s claims.
The foregoing demonstrates that though divisional applications are permitted in India, they are subject to significantly more restrictions and complications than in other jurisdictions. Ultimately, applicants should not expect divisional practice in India to serve the same strategic purposes as continuation practice in the United States or other similar jurisdictions, in which continuation and divisional decisions can often be deferred until the last days that an application is pending. Rather, applicants in India should consider their divisional strategy, and indeed their overall filing strategy, much earlier and should even consider drafting the claims of the application in view of such strategic considerations. Finally, it is our experience that the laws and regulations, and the interpretation and application thereof, in India are often changing. Accordingly, any filing strategies should be fully vetted with a competent patent lawyer in India to ensure that any current best practices are implemented.
This document is intended to provide you with general information regarding divisional patents in India. The contents of this document are not intended to provide specific legal advice. If you have any questions about the contents of this document or if you need legal advice as to an issue, please contact the attorneys listed or your regular Brownstein Hyatt Farber Schreck, LLP attorney. This communication may be considered advertising in some jurisdictions.