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(Guest)

Divisional

Can we file a divisional claiming priority of a divsional application.

 

The divisional application will have a filing date of main application. If the main application is granted and first divisional is pending,

In such a case, can we file another divisional



Learning

 9 Replies

Rajesh Hazra (Mediator and Legal Counsel )     26 April 2013

Dear Navya 

Your answer is you can file anothe Divisional Application claiming priority from the earlier filed application (Not Div application)

 

Regards


(Guest)

We cannot file further divisionals after the grant of the main appplication.

We cannot claim priority of a divisional as it claims priority of the main application.

I think my interpretation is correct

Rajesh Hazra (Mediator and Legal Counsel )     26 April 2013

Yes you are perfectly on the right track.......

subramanian (consultant)     26 April 2013

You can file a divisional application to a pending divisional application provided the patent office has raised distinct inventions.You will get priority date of the first divisional application which infact is the priority date of the main application even when the main application is granted patent as the first divisional application is still pending.

t.r.subramanian


(Guest)

Dear sir,

As per case history,  the second divisional will not be granted if it is filed after the the main application is granted

The decision of 264/del/2005 is attached for your reference.

Kindly enlighten me if ther are any further developments in this case.


Attached File : 305897822 264-del-2005.pdf downloaded: 85 times

subramanian (consultant)     27 April 2013

I have seen the decision.I feel the submission made by the applicants attorneys is valid.As per section 16 all div appln shall proceed as substantive appln that means as a separate independent appln.Hence a second div appln from a first div appln can be filed.The controller agrees to this but that he is of the opinion that it should have been filed before the grant of the main appln The attorneys view is that it should have been filed before the grant of the first div appln and the date of grant of the main patent has no bearing.I agree with the attorneys as the first div appln is to be treated as if it is another main appln as no definition has been provided in the Act as to 'substantive appln'.As regards novelty the applicant has disclosed the invention in the main appln and he has only claimed the same in the second div appln and so it cannot be objected on the ground of novelty.an appeal should have been filed.

T.R.Subramanian

Sy.patents (Freelance)     28 April 2013

I agree with Subramanian sir in principle. I however have some questions.

 

Situation 1:

Let's say the examiner in FER clearly identifies 3 distinct inventions in parent application. However the applicant files a single divisional for the other two and then files the 2nd divisional just before the grant of the first divisional. In my opinion, the examiner can rightly object to filing the 2nd divisional because the applicant was made aware of the 3 different inventions and he choose to file a single divisional and did not even contest the that the other two inventions are not distinct. This I guess may have been the case in 264/Del/2005 (based upon examiner contention under paragraph 4(v). We need to look at the prosecution history of all the 3 applications to conclusively figure it out.

 

Situation 2:

If examiner identifies only 2 distinct inventions in parent application and the applicant files a div [first] and subsequently the examiner again raises the objection of multiple inventions in the divisional [first], then applicant has the right to file another divisional [second]. If the examiner contends that the second divisional should be filed before the grant of parent, in my opinion, it will be improper.

 

IIn general I feel that substantive rights should be given more weightage even if there are few prosecution irregularities if they are not going to adversely impact third parties. The applicant should have preferred an appeal before IPAB. 

can anyone tell us if there was indeed an appeal in this case???

subramanian (consultant)     28 April 2013

It appears the case falls under situation  2 as the applicant would not have filed the second div application unless the office had objected that the claims contained plurality of inventions . Even if it falls under situation 1 the applicant does not get any extra protection.The applicant cannot be made to suffer If he files a second div application to the first div appln.The examiner generally mentions that the claims relate to a plurality of distinct inventions without stating the number of distinctive inventions>The applicant files a div application on his understanding of what are distinct inventions which may not be correct and has to file a second div appln later to the first div appln.This could have been avoided had the examiner been specific.Further in these type of cases third party rights are not affected and the applicant gets the right of what is due to him.+

T.R.Subramanian


(Guest)

 

(First divisioanal) 346/DEL/2001 were filed on 23/03/2001 i.e. well before the grant of Patent on 8/DEL/1997(Main application),hence allowed by the Patent office on 9/02/2005,

whereasthe second Patent application no.264/DEL/2005 filed on 08/02/2005 i.e. after 3 years from date of grant of Patent on 08/DEL/1997, i.e.much afte rthe statutory limits.

From this Wt is understand is that the second divisional is filed much after the grant of the main application (i.w 8/del/1997). hence it is not granted.

From the above inputs wt I undersatnd is the date of filing is dependedent on the subject matter disclosed in the main application and the second divisional application and aslo the examiners objection of disunity of invention.


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