IPAB Again Declares Divisional Patent Application Filed After The Unity Of Objection Cannot Be Rejected Based On Parent Patent Application
Intellectual Property Appellate Board (IPAB) in its order, OA/47/2020/PT/DEL dated July 20, 2020, says a divisional patent application filed from a parent patent application after the unity of objection cannot be rejected based on the parent patent application/patent and set aside the decision dated January 02, 2020 (Impugned order), of Assistant Controller of Patents & Designs, Patent Office, New Delhi in the Indian Patent application: 5912/DELNP/2015.
BACKGROUND OF THE APPEAL
The Indian patent application No.:5912/DELNP/2015 (hereinafter referred to “Divisional application”) entitled “A Laundry Detergent Composition Comprising Glycosyl Hydrolase” is a divisional patent application from a parent application no.: 4614/DELNP/2010 (hereinafter referred to “Parent application”) now granted as Indian Patent No. IN279837. The parent application was examined and the First Examination Report (FER) was issued on September 19, 2014. It was held by the Controller that there were two sets of distinct inventions, Group I, Claims 1 to 9 relating to the combination of a specific enzyme with an amphiphilic alkoxylated grease cleaning polymer, and Group II, Claims 10 to 17 relating to the combination of said specific enzyme with aspecific random graft co-polymer. In responding to the FER, the patentee has admittedly deleted the claims 10 to 17 and filed the present divisional application with the deleted claims 10 to 17 within the time limit as prescribed in the Patent Act, 1970.
The Controller has examined the divisional application and refused to grant the Divisional application on the ground that the claims of the divisional application were in conflict with the claims of the Parent application.
Against the Controller decision, the Appellant contended that the claims of the divisional application are allowable under Section 16(1) of the Act which reads as under:
“Section 16(1) “A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedying the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first-mentioned application.”
IPAB’S ORDER ON THE ISSUE OF THE APPELLANT CONTENTION
IPAB, by citing earlier orders, Order No. 16 of 2016 in Milliken & Company vs. Union of India & Ors., (OA/61/2012/PT/MUM), Order No. 1010 of 2014 in Syntonix Pharmaceuticals, Inc., vs. The Controller of Patents & Designs & Anr. (OA/26/2013/PT/KOL), Order No. 83 of 2015 in the National Institute of Immunology vs. The Assistant Controller of Patents & Designs (OA/21/2011/PT/DEL), states that the findings of the Controller in the Divisional application are not acceptable in view of the unity objection in the first examination report of the Parent application issued by the Controller. The IPAB further pointed out that the Controller’s findings would have been allowed in case substantial amendments are made in the divisional application which enlarges the scope of the invention claimed in the Parent application.
In view of the above reasons, IPAB held that the impugned order erred in concluding that the claims of the Divisional application are not fit for being filed as a divisional application under Section 16 of the Indian Patent Act, 1970. The relevant excerpt of the order is reproduced hereinbelow.
“The Impugned order erred in concluding that the claims of the Indian Patent Application No. 5912/DELNP/2015 are not fit for being filed as a divisional application under Section 16 of the Act and is contrary to the same decision already rendered by IPAB”
Finally, the IPAB has set aside the impugned order of the Assistant Controller of Patents with respect to the Divisional application by allowing the appeal of the Appellant.