Understanding Divisional Patent Applications
Article 4G of the Paris Convention advocates for divisional patent applications which seek to ensure that the inventors’ multiple inventions are protected individually and that the objections raised in the examination report are rectified in a productive manner. In India, Section 16 of the Patents Act, 1970 incorporates the provision for division of applications. The provision stipulates for filing of an additional application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the parent application. Such application can be filed by the applicant voluntarily or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention.
Ascertaining the Effectiveness of Section 16
The provision endeavors to protect multiple inventive concepts separately. However, the provision has been misused in order to monopolize a particular segment or to frivolously stretch the examination process. A brief understanding of the following cases can be helpful in ascertaining the effectiveness of Section 16-
1) The Delhi Network Of Positive People V. Union Of India & Ors. [W.P.(C) No.2867/2014]
The case concerns with Anti-Retrovirals (ARVs) drugs which when taken in combination of three, help in the treatment of HIV. Prices of these drugs were exorbitant till a bunch of Indian generic pharmaceutical companies offered to make the same medicines at much lower costs. This resulted in a fall in prices of the said medicines and which in turn enabled the developing and least developed countries to provide treatment to persons living with HIV/AIDS. In order to neutralize the effect of low cost medicine in the market, the patentee of ARVs went ahead to file multiple patent applications relating to individual drugs and monopolize the sale of the same.
The court accepted the allegations made against the drug company, that the divisional applications were filed with the intent to keep the patent applications alive and/or to revive the patent applications which were about to be rejected/refused. Therefore, it could be inferred that the applicant had been misusing the provision for filing divisional application with claims which are identical to the claims of the parent application.
However, the procedural intricacies often render the deliverance of justice ineffective as it happened in this case. The court left the petitioners devoid of any remedy citing the following reason:
Although the errant patent applications suggest of abuse of procedure, it is beyond the court’s jurisdiction to provide the form and manner in which any application for patent may be processed in the Patent Office and the details to be furnished by the applicant to the Controller etc.
2) LG Electronics Inc. v. The Controller of Patents & Designs 7 Ors. [Order No. 111/2011. IPAB]
While adjudicating on a divisional application filed by LG Electronics, the Board negated the argument of the applicant that the word “or” in the provision confers discretion upon the applicant i.e., to divide a patent application suo moto. It was held that the word “or” was conjunctive in its aim and hence the divisibility of an application shall be based on a plurality of distinct independent inventions. Hence, the Board disallowed the appeal as the claims in the parent application were same as those contained in the divisional application.
If the applicants in such cases are given unqualified liberty to file divisional applications, the examination and re-examination stage will not terminate in a time bound manner and the patenting processes in the country will be severely impeded. Such a custom will harm the society as it will deprive them of gaining access to the patented works within a reasonable time. Frivolous divisional applications can be used as a tool to extend the life of the patent, thereby stretching timelines as prescribed under the law.
Law strives to provide a remedy to its subjects, which at times becomes impossible due to the ill intent of men with whom the law concerns. Divisional patent applications have been transformed into a tool to deceive the authority and the public at large. From here, the onus lies upon our legislature and the executive to fill in the loopholes in the patent application processes and curtail frivolous filings of divisional applications.