A divisional patent application must be filed before the grant of a parent application; filing post-grant is impermissible under Section 16(1) of the Patents Act.

JUDGMENT :

MANMEET PRITAM SINGH ARORA, J.

W.P. (C)-IPD 10/2025

Factual Matrix

1. The Petitioner on 9^th May 2021, filed Indian Patent Application No. 202127020980 [‘Parent Application’], claiming priority from PCT/CN2018/119908 dated 7^th December 2018, along with a request for examination under Section 11B of the Indian Patents Act, 1970 [‘the Patents Act’], and corresponding rules of the Indian Patent Rules, 2003 [‘Patent Rules’].

2. The bibliographic details of the Parent Application are as follows:

3. The Parent Application underwent examination, and Respondent No.2/Assistant Controller of Patents and Designs [‘Controller’], through its Mumbai office, issued a First Examination Report [‘FER’] on 23^rd May 2022, where Controller has raised objection to the claims of the Parent Application under Section 10 (5) of the Patents Act as containing plurality of inventions which are not linked by single inventive concept.The Petitioner filed its response to FER on 19^th September 2022. The Petitioner responded to the objection by stating that the multiple independent claims are linked to a single inventive concept.

4. Following this, the Controller issued a hearing notice, maintaining objections from the FER and scheduled the hearing for 7^th June 2024.

5. The Petitioner appeared at the hearing on 8^th July 2024, and argued that the claims complied with common inventive features, justifying their allowance as multiple independent claims. Following the hearing, detailed written submissions were filed on 22^nd July 2024.

6. In the written submissions, the Petitioner has mentioned its intention to file a division application if the Controller is not satisfied with their arguments under Section 10 (5) of the Patents Act.

7. Since the Controller was satisfied with the submissions made by the Petitioner under Section 10 (5) of the Patents Act, the Parent Application was granted on 26th July 2024.

Aggrieved by the order allowing the Parent Application, which consequently closed the window available to the Petitioner for filing a divisional application, the present petition has been filed before this Court.

Submissions by the Petitioner

8. Mr. Pradeep Koshti, learned counsel appearing on behalf of the Petitioner has made the following submissions:

8.1. He states that the Petitioner had duly instructed its representatives to prepare and file a divisional application before the grant of the Parent Application, precisely, on 28^th June, 2024.

8.2. He states that the Petitioner had also sought an extended hearing to file a divisional application covering both the disclosed inventions and the claims not allowed by the Controller before deciding the grant of the Parent Application.

8.3. He states that the Petitioner clearly expressed the intent to file a divisional application including claims identified as lacking common inventive features as well as claims pertaining to the invention disclosed in the specification, pursuant to the communication dated 28^th June 2024; the Controller agreed, assured further hearings, and directed the Petitioner to file written submissions.

8.4. He states that the written submissions were filed on 22^ndJuly 2024, clearly recording the Petitioner’s intent to file a divisional application and the Controller’s assurance of an extended hearing. The submissions summarised the hearing discussions on the divisional application, noted the reservation of decision on the allowability