IPAB Upheld that the Single Inventive Concept Forbids a Divisional Patent Application

Intellectual Property Appellate Board (IPAB) in its order, OA/53/2014/PT/CH dated December 21, 2020, says that there is no objection to file a divisional application from the applicant suo moto if it involves a plurality of inventions as enshrined in section 10(5) of the Patents Act, 1970 but a divisional application is not allowed for the mechanical splitting of claims that are related to the single inventive concept and upheld the decision dated May 29, 2014 (Impugned order), of Assistant Controller of Patents & Designs, Patent Office, New Delhi in the Indian Patent application: 5445/CHENP/2008.

BACKGROUND OF THE APPEAL

The Indian patent application No.:5445/CHENP/2008 (hereinafter referred to “Divisional patent application”) entitled “INHIBITORS OF EXTRACELLULAR HSP90” is a divisional patent application from a parent application no.: 2594/CHENP/2005 (hereinafter referred to “Parent patent application”) now granted as Indian Patent No. IN234114. The divisional application was divided out of the parent application. In reply to the First Examination Report of the parent application, the Applicant has deleted few claims to meet the official requirements and filed the divisional application with a new set of claims including the claims deleted in response to the FER.

The Controller has examined the Divisional patent application and refused to grant the Divisional application on the ground that the claims of the Divisional patent application were related to the single inventive concept with the claims of the Parent patent application.

PATENTEE/APPELLANT CONTENTION

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.”

The Appellant contended that the impugned order refusing the grant of the divisional patent application is contrary to the law and without proper appreciation of the merits elaborated, which is ex-facie contrary to the well-established principles governing divisional application standards stipulated by the provisions of Section 16 of The Indian Patents Act, 1970.

IPAB’S ANALYSIS AND ORDER

IPAB, by citing earlier orders, Esco Corporation vs. The Controller Of Patents &Designs., (OA/66/2020/PT/DEL), and LG Electronics, INC vs. The Assistant Controller of Patents & Designs& others (OA/6/2010/PT/KOL), states that the board is inclined to agree with the contention of the learned Controller.

The IPAB stressed that the existence of a plurality of inventions in the parent patent application is the essential condition for filing a divisional patent application by the applicant whether it is suo-moto as to remedy Controller’s objection. Also, the IPAB stated that there is no objection to filing a divisional application from the applicant suo-moto if it involves a plurality of inventions as enshrined in section 10(5) of the Patents Act, 1970.

In view of the above, IPAB finds that there is no case of the plurality of invention in the instant application and hence, held that the impugned order is proper and inclined to agree with the contention of the learned Controller.

Finally, the IPAB has dismissed the appeal of the Appellant.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

 

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