Divisional Patent Application of Patent Registration in Coimbatore
Divisional Patent Application
As per the name indicates Divisional Patent Applications are those applications that have been derived from another patent application. Provisions which deal with the Divisional Patent Application are specified under Section 16 of Indian Patent Act, 1970.
Section 16(1) An applicant may, at any time before the grant of a patent registration, if he so desires, or with a view to remedy the objection raised by the Controller or the ground that claims of a complete specification relate to more than one invention, may divide the application and file further application(s) in respect of invention(s) disclosed in the provisional or complete specification already filed. Examination of divisional application is always done face to face the main application. If two or more divisional applications are filled based on a main application, examination of the second or subsequent divisional application shall be done face to face the main application, and the other divisional application(s), examined earlier, to avoid double patenting. The whole patent family, in such cases, is available to the Examiner on the Official database. The date of filing of a divisional application shall be the same as that of the main application, from which it has been divided. The term of patent for a divisional application shall be twenty years from the date of filing of main application or international filing date in case the application was divided out of National phase application under PCT. The Divisional Application should be accompanied by a Complete Specification.
The Divisional Application(s) shall not include any matter not in substance disclosed in the main application. The main application and the Divisional Application(s) may be amended to ensure that neither of the complete specifications includes a claim for any matter claimed in the other.
The Divisional Application is treated as a substantive Application and is accorded the date of filing of the main application along with a separate application number. The Claims of Divisional Application shall have the same priority date as that of the main application. A divisional application shall be examined face to face the first mentioned application (main or parent) so as to avoid claim overlap resulting in double patenting. A divisional application is treated as a substantial application in the sense that:
a. Separate fee(s) is required to be paid;
b. Separate request for examination is required to be made;
c. It can be prosecuted separately,
d. It results in an independent patent registration (Section 16, Explanation Section 11(4)).
If a divisional application is filed in a jurisdiction other than that of the main application, the examination done face to face the main application.(Rule 4).
The Complete Specification accompanying the Divisional Application shall contain a specific reference to the main application number under Rule 13(2).
For all purposes under the Patents Act, the Divisional Application is treated as a substantive application and, hence all fee applicable to a patent registration application shall be payable. (Section 16)
As per Section 16(1) of the Indian Patents Act, it is quite clear that in case of divisional application out of another divisional application or cascading divisional application, the first divisional application is to be treated as “first mentioned application” and the date of grant of the main patent registration has no significance on applicant. This is an example which clears the air for the applicants to file further divisional applications out of another divisional application, subject to fulfillment of other provisions of Section 16 of the Indian Patents Act.
Time for putting application in order for grant
Under Section 21 of the Patents Act, 1970, the timeline for putting an application in order for grant has been-reduced from 12 months to 6 months from the date of issuance of First Examination Report.
Section 21: Time for putting application in order for grant
1. An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.
Explanation: Where the application for a patent registration or any specification or, in the case of a convention application or an application filed under the Patent Cooperation Treaty designating India any document filed as part of the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re-filed it or the applicant proves to the satisfaction of the Controller that for the reasons beyond his control such document could not be re-filed.
2. If at the expiration of the period as prescribed under sub section (1),
a. An appeal to the High Court is pending in respect of the application for the patent for the main invention; or
b. In the case of an application for a patent of addition, an appeal to the High Court is pending in respect of either that application or the application for the main invention, the time within which the requirements of the Controller shall be complied with shall, on an application made by the applicant before the expiration of the period as prescribed under sub-section (1), be extended until such date as the High Court may determine.
3. If the time within which the appeal mentioned in sub-section (2) may be instituted has not expired, the Controller may extend the period as prescribed under sub-section (1), to such further period as he may determine: Provided that if an appeal has been filed during the said further period, and the High Court has granted any extension of time for complying with the requirements of the Controller, then the requirements may be complied with within the time granted by the Court.
Grant of patent and its maintenance
If the Controller finds that the patent application complies with all the requirements, then he grants the patent as soon as possible. After the grant of patent the Controller publishes the fact that the patent has been granted in the Official Gazette. Once the patent registration in Coimbatore has been granted it is important to maintain it. Maintenance or renewable fees must be paid by the patentee to keep the granted patent alive.
Section 43: Grant of patent
1. Where an application for a patent has been found to be in order for grant of the patent and either-
a. The application has not been refused by the Controller by virtue of any power vested in him by this Act; or
b. The application has not been found to be in contravention of any of the provisions of this Act, the patent registration shall be granted as expeditiously as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register.
2. On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection.
Maintenance of patent
In accordance to Section 53 and 142, to keep a patent in force, the renewal fees shall be payable at the expiration of the second year from the date of the patent registration or of any succeeding year and the same shall be remitted to the patent office before the expiration of the second or the succeeding year. Further, renewal of a patent can be done beyond the due date in the extended period of six months from that date by filing Form-4 along with the prescribed fee. This period of six months is not extendable,
a. Where a patent is granted later than two years from the date of filing of the application, the fees which have become due in the meantime may be paid within a period of three months from the date of the recording of the patent in the register. The date of recording of patent in the register of patents is communicated to the applicant through a letter which accompanies the Certificate of Patent. The period for payment of renewal fees may be extended by a maximum of six months by filing Form-4 with the required fee.
b. If a patent is granted before the expiry of two years from the date of filing of application, the first renewal fee becomes due in respect of the third year. However, the renewal fee shall be paid before the expiry of second year. This period is extendable by maximum six months.
c. First Renewal fee for a patent becomes due in respect of the third year counted from the date of filing of application for patent. However, the renewal fee for third year has to be paid before the expiry of second year. For clarification, the renewal fee may be paid before the expiration of the fourth year from the date of Patent registration for the fifth year and so on.
d. While paying the renewal fee, the patentee shall quote correctly the patent number, date of patent and the year in respect of which the renewal fee is being paid. Any mistake in the above said particulars may lead to a lapse of patent.
e. For the Patent of Addition no renewal fee is required to be paid. Annual renewal fee may be paid for 2 or more years in advance.