Delhi High Court has that the onus to file a divisional application in patents lies solely on the applicant and must be filed before the parent application is granted. The court judgment came from the case of .
During examination of Yangtze Memory Technologies’ (Yangtze) parent patent application, the company wanted to file a divisional application if its parent one was unsuccessful. Yangtze filed a petition against the order of the assistant controller of patents and designs in the high court, saying the company was denied the right to file divisional applications.
The controller initially raised objections to the parent patent application because it contained a plurality of inventions not linked by a single inventive concept.
Plurality of inventions refers to when a patent application contains multiple inventions that are independent of each other. Such instances require divisional applications.
A divisional application is part of the parent patent application, and mentions all the small and related inventions. The granting of divisional applications specifically extends patent protection to the smaller inventions.
Yangtze argued before the court that it had clearly stated its intention to file a divisional application and even sought an extension, which the controller had agreed on. Despite this, the controller granted the patent without giving Yangtze any prior notice or the promised hearing. Approval of the parent patent affected Yangtze’s ability to file a divisional application to protect the inventions that formed part of the main application.
Yangtze relied on and .
The respondents argued that the patent application was filed in 2021 and granted in 2024, giving Yangtze plenty of time and opportunity to file the divisional application. They also argued that no specific restriction was in place barring Yangtze from filing the divisional application.
The respondents also refuted Yangtze’s claim of having expressed its intention to file a divisional application and in fact, had requested the controller to grant the patent application expeditiously.
During its analysis, the court observed that Yangtze had more than three years from the date of filing the parent patent application to its approval but did not file any divisional application. This also included the time when the application was being processed and objections over the plurality of inventions were being addressed by the company. At that time, the company amended the application and did not file a divisional application.
The court also observed that while dealing with the objection, Yangtze asserted that all included inventions were part of a single inventive concept. Yangtze’s claims of having communicated its intention to the controller to file a divisional application were also rejected as the communication was made only as an alternative in case the controller’s objection over plurality persisted. When the objection was addressed by Yangtze’s assertion of the inventions being a single inventive concept, the alternative was no longer relevant.
The court found no merit in the Yangtze’s petition, which was dismissed.
