News & Legal Developments

1. Request for Examination Deadline:

• For applications filed in India before 15 March 2024, the deadline is 48 months from the earliest priority date (or PCT/Indian filing date).
• For applications filed in India on or after 15 March 2024, the deadline is reduced to 31 months from the earliest priority date (or PCT/Indian filing date).

2. Foreign Patent Information (Form 3):

• Form 3 must be filed with the application, updated within 6 months of filing, 3 months after the First Examination Report (FER), and 2 months after any request by the Controller.

3. Section 8(2) Compliance:

• Section 8(2) documents must be submitted within 2 months of an Examiner’s request.

4. Extension of Time for PCT Documents:

• The deadline for submitting the Verified English Translation and Certified Copy of Priority Document is 31 months from the priority date, extendible by 6 months upon petition (with punitive official fees).

5. Divisional Applications:

• Divisional applications can be filed from provisional applications, complete applications, or even from previous divisional applications.

6. Public Display (No Novelty Loss):

• Public display/publication in India will not affect novelty, provided such display/publication is with the inventors consent, and is in respect to exhibition notified by the Central Government, if the application is filed within 12 months of the display, with a Form 31 request and the prescribed fee.

7. Pre-Grant Opposition:

• The Controller will first assess if a prima facie case is made by the opposition. If satisfied, the Controller will notify the Applicant within 1 month of receiving the representation and the applicant has 2 months to respond. The filing fee is US$ 46 for individuals and US$ 232 for corporates.

[A] New Actions Allowed with High Punitive Fees

• Filing PCT national phase applications beyond 31 months from the earliest priority date
• Filing Request for Examination beyond 31 months
• Filing response to the First Examination Report beyond the 9 months extension period
• Payment of renewal fees beyond the 6 months extension period

[B] Extensions for Other Deadlines with Punitive Fees

• Filing English translations of PCT Amendments and Priority Document beyond 31 months
• Filing certified copies of the Priority Document beyond 31 months (in the absence of form PCT/IB/304)
• Filing Form 3, Section 8 documents, and related prosecution materials beyond the first 3 months extension
• Filing Written Submissions after a hearing, beyond 15 days from the hearing date
• Filing Reply Statements to notices of opposition, beyond 2 months
• Filing a Review Petition against a Controller’s decision, beyond 1 month
• Filing the Working Report for granted patents beyond the first 3 months extension

Procedure

• No petition is required for these extensions. The prescribed form, along with the relevant fees, must be submitted to avail the extensions.

Legal Basis (Section 16, Indian Patents Act)

• At any time before the grant of the parent application.
• To address objections regarding multiple/distinct inventions in a single application.
• For an invention disclosed in the provisional or complete specification of the parent application.

Evolution of Legal Interpretation

• Previous Practice: Voluntary divisional applications were used strategically, often duplicating claims from the parent application. This allowed alignment with global filings and avoided potential invalidity challenges.
• IPAB & 20 July 2022 Delhi High Court Ruling: Restricted divisional filings, stating that such applications must stem from claims (not mere disclosures) of the parent application.
• 13 October 2023 Delhi High Court Ruling: Overturned the 2022 decision, affirming that divisional applications are valid if based on disclosures in the provisional or complete specification, even if not originally claimed.

Key Considerations for Divisional Applications in India

1. Eligibility:

• A divisional application can be filed in response to unity objection raised by the Patent Office or voluntarily to address lack of unity for a distinct invention disclosed in the parent specification.
• Claims not originally claimed in the parent application can be included if they meet the disclosure requirement.

2. Single Inventive Concept:

• Claims directed to a single inventive concept are based on common structural features of the product and not on the basis of the function/use of the product.
• Two different processes cannot be covered in a single application.

3. Claiming Strategy:

• If subject matter in the parent application belongs to the same inventive concept, it may not be separately claimed in a divisional application.
• Subject matter, not held to be patentable in the parent application, may not be covered by a divisional application with claims revised to recite patentable subject matter, if the non patentable claims and the patentable claims lie within a single inventive concept.

4. Timing of Filing:

• Must be filed while the parent application is pending.
• Ideally filed before or alongside the response to the first examination report or filing of final written arguments pursuant to hearing.
• If an appeal results in remanding of the application to the Patent Office, a divisional application may be filed post-remand.

5. Serial Divisional Applications:

• Divisional application may be filed serially from another pending divisional application, even after the grant/withdrawal/refusal of the parent application, on the condition that there is multiple distinct inventions.

6. Lack of Unity Objections:

• Even if foreign jurisdictions do not raise unity objections, the Indian Patent Office may do so, allowing the filing of a divisional application.
• Applicants may file a divisional application on their initiative if a lack of unity exists.

7. Deleted Claims & Divisional Applications:

• Deleted claims from the parent application may be pursued in a divisional application, provided there is a lack of unity between the parent claims and claims of the divisional application.