Is a “divisional of a divisional application” allowed in India?

The Patents Act, 1970 (hereinafter referred to as the Act) allows for the filing of a divisional application at any time before the grant of the parent application. Under Section 10 and 7 of the Act, a patent can relate to one invention only or group of inventions linked together to form a single inventive concept. In such a scenario, Section 16(1)of the Act provides that an applicant, may on his own volition or in order to overcomeobjections relating to multiplicity of inventions in an application raised by Controller, file a ‘further application’ in respect of the invention as claimed in the first mentioned application that lacks unity of invention.

In context ofSection 16 of the Act, one issue that stems up is, as to whether Section 16 can be interpreted to allow the filing of a divisional application of a divisional application. That is to say, after the filing of a divisional application arising from a parent application, can a further divisional application arising from the first filed divisional application be filed before the grant of said first filed divisional application but after the grant of the parent application?

Interpretation of Section 16 leaves no ambiguity that it is possible to file a divisional of a divisional application. This is because Explanation to Section 16 clearly states that after the first divisional is filed, said application is to be treated as a substantive and independent application which means it can become an initial application for filing of a further divisional application, provided the condition of plurality of invention is satisfied in the first divisional application.

However, the Patent Controllers have consistently held that filing of suchfurther divisional applications is not permissible under Section 16[1]. Thus, according Patent Office’sinterpretation of Section 16, while multiple divisional applications can be filed from the original parent application, a divisional application arising from a previously filed divisional application and filed after the grant of the original parent application, is not permitted under the Act.

This inconsistency in the interpretation of Section 16 was resolved, to a certain extent, by the order of the Intellectual Property Appellate Board (IPAB) in the case of National Institute of Immunology vs. The Assistant Controller of Patents & Designs.  However, to the extent that the further divisional application was found allowable in this case owing to the fact that the Controller in the FER of the further divisional application had raised a lack of unity of invention related objection, the order did not settle the question about validity of such divisional applications unambiguously.

The recent order of the IPAB in the case ofMilliken & Company vs. Union of India and others, has unequivocally held that filing of a divisional application arising out of a divisional application is allowable, subject to other conditions, such as presence of multiplicity of inventions and pendency of the firstdivisional application,being met. In the instant order, the IPAB noted that the patent application in question was presumably unallowable under Section 16 by the Controllersolely on the ground that it was carved out of another divisional application.Holding the Controller’s interpretation to amount to misconception of the provision under Section16, the IPAB noted that ‘there is absolutely no ambiguity in theprovision as conceived by the Assistant Controller in the instant case’. Thus, the present order puts to rest the long-standing ambiguity and clarifies that a divisional application carved from a previously filed divisional application filed after the grant of the original parent application but during pendency of the previously filed divisional application is allowable

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