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 productively. In India, Section 16 of the Indian Patents Act 1970 incorporates the provision for the division of applications. The provision stipulates filing an additional application for an invention disclosed in the provisional or complete specification already filed in respect of the parent application. Such an application can be filed by the applicant voluntarily or to remedy the objection raised by the Controller on the ground that the claims of the complete specification relating 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 to monopolize a particular segment or to stretch the examination process frivolously. A brief understanding of the following cases can help ascertain 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 Anti-Retrovirals (ARVs) drugs, which, combined with three, help treat HIV. These drugs’ prices were exorbitant until many 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, which enabled the developing and least developed countries to provide treatment to persons living with HIV/AIDS. To neutralize the effect of low-cost medicine in the market, the patentee of ARVs filed multiple patent applications relating to individual drugs and monopolized the sale of the same.
The court accepted the allegations against the drug company that the divisional applications were filed to keep the patent applications alive and 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 a divisional application with claims identical to the parent application’s claims.
However, the procedural intricacies often render the deliverance of justice ineffective, as happened in this case. The court left the petitioners devoid of any remedy citing the following reason:
Although the errant patent applications suggest abuse of procedure, it is beyond the court’s jurisdiction to provide the form and manner in which any application for a patent may be processed in the Patent Office and the details to be furnished by the applicant to the Controller, etc.
2) L.G. Electronics Inc. v. The Controller of Patents & Designs 7 Ors. [Order No. 111/2011. IPAB]
While adjudicating on a divisional application filed by L.G. 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. Therefore, the Board disallowed the appeal as the claims in the parent application were the same as those contained in the divisional application.
If the applicants 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 society as it will deprive them of gaining access to the patented works within a reasonable time. Frivolous divisional applications can be used to extend the patent’s life, thereby stretching timelines as prescribed under the law.
Conclusion
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 tools to deceive the authority and the public. 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.