We aware that the new manual issued recently by IPO India, includes new guidelines and best practices for filing and prosecuting divisional applications. Some of the recent decisions from IPO are in line with this.
(a) A divisional application should not contain same claims which are rejected/ objectionable in first application. If a divisional application is filed with same claims as of first parent application, it is not maintainable under section 16(1) as divisional [Decision 1] [Decision 2]. Both the decisions discuss the same. In Decision 1, Patent applicant (Ethypharm) filed a patent application IN/PCT/2001/01143/DEL which was examined and FER was issued with some objections. Applicant did not respond to the FER, rather filed new divisional (2042/DEL/2004) with same set of claims. Decision 2 discusses rejection of 602/DEL/2007 which is divisional application of Tenofovir disoproxil patent (2076/DEL/1997).
(b) A divisional application should be divided out of first parent application before its grant and can not be divided out of a divisional application [Decision]. This decision discusses meaning of the term “First-mentioned” in section 16(1). In this case, patent applicant (UCB) has filed a divisional application out of other divisional application. Application No: 201/MUMNP/2007 (Divisional of 340/MUMNP/2005 which is divisional of IN/PCT/2002/00983/MUM); Patent applicant: UCB FARCHIM S.A.
(c) A divisional application has to be filed in the same jurisdiction of parent application. Examinaion of divisional application shall be done vis-à-vis with first parent application.