LEGAL PROVISION OF SECTION 46(2)
Section 46(2) provides for a patent to be granted for one invention only. It further raises an interesting question of whether the rejection of a later application’s claims due to it being similar and overlapping in scope with that of an earlier patent application is within the ambit of Sections 46(2).
This implies that where there are two applications with a similar subject matter, only one of the two applications will be allowed as Section 46(2) states, “ a patent shall be granted for one invention only. “[1]
Thus, two patents cannot be granted for a single invention. Objections under Section 46(2) mainly consist of double patenting situations; the same applicant files more than one patent application concerning the same invention.
An Objection is usually raised when a later-filed application is granted before the application is filed earlier. The same applicant has filed both applications. In such situations, objections are raised relating to the scope of the subject matter of the earlier-filed application. [2]
Besides, Section 13 (1) (b) provides for rejection of a claim due to prior claiming. Prior claiming is said to occur when an invention has been mentioned in a claim of a patent application under consideration and has also been cited in a claim of a complete specification. This complete specification has been filed on a priority date earlier than that of the said patent application. Still, it has been published on or after the priority date of the said application. Thus, the provision of Section 13(b) provides for rejection of a claim within a patent application, which is anticipated by prior claiming in a later published application having an earlier filing or priority date. Prior claiming is said to be relevant to double patenting when both the applications have the same applicant, and inventive concepts [3]Specifications are the patents’ written descriptions. The claims of a patent application indicate the protections being sought by the patent application.[4] Section 10(5) of the patents act further specifies that the claims of a complete specification claim must relate to a single invention or a group of inventions relating to a single inventive concept.[5] Thus although the complete specification includes matter relating to more than one invention, the claims of the specific matter must relate to a single invention or a group of inventions concerning the same inventive concept
Divisional Applications of a patent application can be interpreted as a method to overcome the objections raised under Section 46(2). Section 16 of the Indian Patent Act provides for the filing of divisional patent applications by the applicant.
An example is Unity of Inventions. In an attempt to overcome the objections raised by the Controller under Sections 46(2), 10(5), or/and 13(1)(b), the applicant may remove the disputed claims from the parent patent application and include them in another divisional patent application. It is important to note that claims removed from the parent application must be added as part of the divisional application. It must be based on matters already disclosed in the first parent application. The divisional application claims must relate to the subject matter of the parent application but should not overlap with the claims of the parent application. A reference to the parent application must be made included in the specifications of the divisional application. There are any such overlapping claims. The Controller may require the claims mentioned in either the parent application or divisional application to be amended. Thus, the intended effect of Section 16 is two-fold: to overcome the objections relating to seeking patents of a multiplicity of inventions using a single patent application, by allowing for divisional applications to be filed that protect the multiple inventions disclosed in an application and to allow the priority date of the divisional application to be the same as that of the parent application. A divisional application is to be filed any time before the grant of the patent.[6]
CASE LAW
1. Pfizer Products Inc Vs. The Controller of Patents and Designs (2015) – In this case, Pfizer applied for patents for its compounds 3R, 4R, and Compound X. 3R, 4R is the enantiopure isomer of Compound X. The controller contended that as per Section 46(2), two patents could not be granted for one invention. The controller ( the Respondent) further argued that comparing 3R, 4R with other enantiomeric forms was misleading. Thus, the controller was of the opinion that the compounds are not different and constituted as the same invention. The IPAB rejected this argument as they found the evidentiary statements of the Controller to be contradictory. Further, the respondent failed to substantiate his findings of Section 13(1)(b) of the Act.[7]
2. LG Electronics Inc V The Controller of Patents and Design – Divisional applications. In this case, the appellant, LG Electronics, filed a divisional application a year after the original patent application filing. The Patent Examiner objected that the parent application did not contain a multiplicity of inventions to warrant a divisional application. In response to this, the appellant’s counsel argued that the interpretation of the word “or” in Section 16 of the Act indicated that the applicant might divide the parent application and file for a divisional application suo motu, without any instructions from the Controller to do so. The IPAB rejected the appellant’s above argument and held that although divisional applications may be filed suo motu, the applicant must only do so based on the fact that the parent application contains a plurality of inventions not linked by a single inventive concept. Further, in this case, the patent application’s claims and the divisional application were found to be the same. The IPAB further held that if an applicant were allowed to file for multiple divisional applications without the existence of multiple inventions, there would be a plurality of patent applications to be examined. This would delay the patenting process and introduce an element of uncertainty into the patenting process. Applicants may also misuse the provision relating to divisional applicants’ filing to extend the lives of their patents. [8] Imp of this case – clarifies the scope of section 16 of the Indian Patent Act 1970.
3. Patent Application 811/MUMNP/2005 – In this case, the patent application claimed a process as its invention. The divisional application consisted of a product by process claim, the process being identical to that of the parent application. At this juncture, it is important to note that the protection provided for a process claim extends to the patent. Thus, in this case, the Controller held that the divisional application’s refusal would not infringe the applicant’s right to protect the product. [9]
4. Indian Patent Application -270/CHE/2007 – In this case, it was held that the parent’s claims and that of the divisional application should be substantial. A divisional application will not be allowed if it simply states the parent application’s claims verbatim, without any substantial difference. [10]
[1] https://spicyip.com/2020/11/section-462-one-patent-per-invention-or-one-invention-per-patent.html
[2] https://www.obhanandassociates.com/wp-content/uploads/2016/07/DOUBLE-PATENTING-2015.pdf
[3] https://www.obhanandassociates.com/wp-content/uploads/2016/07/DOUBLE-PATENTING-2015.pdf
[4] https://smallbusiness.chron.com/amend-patent-64818.html
[5] https://www.mondaq.com/india/patent/311150/unity-of-invention-with-a-focus-on-pharmaceutic
[6] https://www.majumdarip.com/blog_post/divisional-patent-applications-in-india/
[7] https://lakshmisri.com/newsroom/news-briefings/patents-anticipation-by-prior-claiming-and-patentability-under-section-3-d/#_ftn1
[8] https://www.lakshmisri.com/newsroom/archives/divisional-patents-in-india
[9] https://www.obhanandassociates.com/wp-content/uploads/2016/07/DOUBLE-PATENTING-2015.pdf
[10] Ibid 8
