Filing of divisional applications were always allowed in India. Over time the Tribunal and Courts have, however, provided various clarifications to streamline the requirements which ultimately culminated into the present amended Rules which came into effect on March 15,2024.

A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, 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, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.

If we see the decisions of Intellectual Property Appellate Board (IPAB), we find that the initial debate was whether the divisional application can be filed by the applicant’s own volition and if so whether the same claims can be filed so as to extend the prosecution, the latter being a well settled practice in Australia and few other jurisdictions.

In the past it was fairly common to file divisional applications to extend the prosecution. However, for the first time the IPAB  laid down and clarified that for the filing of a divisional application, a plurality of inventions is a must, whether filed on applicant’s own volition or to remedy  to objections of the Controller with respect to plurality of invention [IPAB Order No. 243 of 2012 — Bayer Animal Health GMBH, Germany Vs. Union of India; IPAB  Order No. 111 of 2011 – LG ELECTRONICS, INC Vs. The Controller of Patents and Designs]. Thus it was clearly laid down that plurality of inventions is a necessary precondition and that divisional applications cannot be filed to resubmit the same set of claims or just to extend the prosecution. The IPAB went onto hold –

While all the other criteria may have been met, the basis on which division is granted is itself plurality of invention alone and by-passing that criterion, no division can be granted. Here, the word “division” cannot mean split one invention into splinters, it can only mean splitting one application into more than one so that each application is for a separate invention. That is how the word “division” can be understood. [Syngenta V Union of India IPAB ORDER No. 19 of 2013]

In ESCO Corporation Vs. The Controller of Patents & Designs, in OA/66/2020/PT/DEL, the Hon’ble IPAB put forward specific prerequisites for filing of a divisional application. It was clear that for a divisional application whether filed voluntarily by applicant or to remedy objection from Controller, there must be a plurality of inventions and the claims of divisional should have basis in the parent application and the parent application ought to be subsisting when the divisional application is filed.

Subsequently, with the abolition of the IPAB, the High Courts became the Appellate Authority and the journey continued with respect to plurality and disclosure of inventions.

In BOEHRINGER INGELHEIM INTERNATIONAL GMBH versus THE CONTROLLER OF PATENTS & ANR.( C.A. (COMM.IPD-PAT) 295/2022 & I.As.10369-70/2022) , the Delhi High Court, referring to the above IPAB decisions held that plurality of inventions was a prerequisite for the filing of a divisional. Further it held that the plurality of the inventions ought to be present in the claims and that the claims ought to be based on the disclosure. However, if plurality is not present in the claims a divisional application cannot be allowed. In other words, divisional applications cannot be allowed to be filed solely on the basis of disclosure made in the specification in respect of alleged inventions, and it did not allow the divisional application in question, directed to a product based on examples with no claims for product in the parent application.

This decision of the Hon’ble Delhi High Court was discussed at length in a subsequent judgment from the Delhi High Court in matter of SYNGENTA LIMITED Versus CONTROLLER OF PATENTS AND DESIGNS [C.A.(COMM.IPD-PAT) 471/2022]. It was held in this judgement, that the requirement of plurality of inventions is not applicable when divisional application was filed by the applicant on its own will but is a requirement when filed to remedy an objection of  the Controller.

It further clarified whether multiple inventions ought to be present only in the claims of the parent application or may be present anywhere in the disclosure in the specification. It was held that the plurality of the inventions is not required to be found in the claims of the parent application but may be present in the disclosure of the provisional or complete specification.

Accordingly it referred two questions for consideration by a Division Bench of this Court to be constituted by and subject to orders of Hon’ble the Chief Justice, namely whether requirement of a plurality of inventions in the parent application, is requirement for a Divisional Application even where filed by the applicant suo moto, and not to remedy objection from Controller?; and if yes, whether such plurality of inventions have to be reflected in the claims or in the disclosures in the complete specifications accompanying the claims in the parent application?

Division Bench of Delhi High Court in SYNGENTA LIMITED Versus CONTROLLER OF PATENTS AND DESIGNS (C.A.(COMM.IPD-PAT) 471/2022 ] ended the debate and held that there has to be plurality of inventions for filing divisional application (whether by applicants’ own volition or to remedy the objection of Controller) and that such plurality of inventions would have to be tested based on disclosures in the provisional or complete specification of the parent application.

The laws laid down by the Appellate body led to the amendment in the Rules on March 15, 2024 where a specific sub-rule was added which states that one or more divisional applications may be filed in respect of invention disclosed in a provisional or complete specification or in a divisional application. In other words, divisional application would be treated as valid even if the same was filed on the basis of the disclosure in the provisional or the complete specification of the parent application, even if the same was not claimed in a claim of the parent application. Here is the relevant part of the latest amended Rule 13(2) touching divisional applications (sub-rule 2(A) added)

Rule 13. ……

(2) A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made.

(2A) A patent applicant may, if he so desires, file one or more further applications under section 16, including in respect of an invention disclosed in the provisional or complete specification or a further application filed under section 16.