Continuing Applications – US and India Perspectives on Claiming

In US, Patent law offers two options for continuing an application, based on the parent non-provisional patent application. They are 1. Filing a Divisional Application and 2. Filing a Continuation Application. In both of the available options, the common guiding thread is that the parent application should be (i) a non-provisional (ii) completely supporting all the claims of the continuing application, and (iii) copending at the time of filing the continuing application.

A divisional application in US is a later application in which a distinct invention is carved out of an earlier, non-provisional application. The divisional application is often filed as a result of a restriction requirement made by the examiner identifying multiple inventions during prosecution. A first set of claims is chosen for the parent application and the divisional application is filed for the second set of claims that is identified to be distinct from the first set of claims.

A continuation application in US is a later application in which a second set of claims having a different scope is carved out of the earlier, non-provisional application. There is no requirement for the second set of claims to cover a distinct invention in comparison with the first set. The continuation application in US enables applicant continue to argue with the USPTO for a broader or different scope of patent protection using the second set of claims, and generally filed after a first set of claims are determined to be allowable.

A continuation application filing is a very useful and powerful concept as it allows claiming a subject matter that is present as a part of the specification, but was not initially included in the claims. Filing of continuation application is routinely used by the US applicants mainly to pursue a broader scope of claims or to claim some subject matter that was initially “left out” from the original claims set by disclosing in the specification without claiming, or to cover alternative embodiments of the original claims.

In India, there is no separate provision for filing a continuation application similar to the continuation application in US, allowing the Applicant to claim a subject matter that was not initially presented as a part of the claims set. The patent of addition provision in India needs to establish novelty with respect to the parent application, and hence cannot be completely based on the specification filed as a part of the parent application. In other words, the patent of addition must disclose subject matter over and above that disclosed in the parent application and cannot merely claim based on the subject matter disclosed in the specification of parent application.

Initially, it was widely believed that the provision of divisional application caters to the continuation application also in India. However, the progressive decisions and guidelines on this subject seem to suggest the contrary.

Divisional Application in India

Section 16 is titled as “Power of Controller to make orders respecting division of application” and the section 16 (1) states “A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.”

The title of the section 16 and the phrase “if he so desires” in section 16 (1) seem to suggest that the Applicant can file a divisional application on his own and the Controller has a power to make orders respecting the application made as such.

While the provision of filing a voluntary divisional application by an applicant is not ruled out in the decisions with respect to LG Electronics Inc. v. The Controller of Patents & Designs (Order 111/2011), Bayer Animal Health GmbH, Germany v. Union of India (Order 243/2012), and Syngenta Participations AG v. Union of India (Order 19/2013), these decisions made it clear that presence of plurality of inventions in the parent application is an essential criterion.

Further, it has to be noted that according to section 16 (1), “claims” of the complete specification need to relate to “more than one invention”. Thus, section 16(1) does not include a provision for the subject matter disclosed in the parent application, but not “claimed” in the (originally filed) parent application to be a basis for a divisional application. This is further aided by the section 59, which states that “no amendment of a complete specification shall be allowed, the effect of which would be … that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.” Thus, even if the divisional application is based on the amended claims of the parent application, the amendment of claims in the parent application itself is such that the scope of the amended claims is within the scope of the originally filed claims.

Reinforcing the above deliberation, the manual of patent office practice and procedure, Version 3.0 published on 26th November, 2019 has specifically introduced a clear guideline that “Claims of divisional application(s) shall be based on the claims of first mentioned (or earlier application for that matter) from which instant application is divided out and no addition of claims, which do not fall within the scope of said claims, is allowable.”

Thus, (a) claiming a subset of “claims” presented in the parent application, and (b) establishing that the subset such claimed is a distinct invention than considered to be allowable in the parent application are the key requirements of a divisional application.

Priority of a Provisional Application to the Divisional Application

The updated manual of patents has also added an “advice” to applicants to “not to include claims in the provisional specification” (Serial No. 05.02.02). In view of the guideline of the updated manual on the divisional application and the advice on the provisional application, the phrase “…in respect of an invention disclosed in the provisional…” present in section 16(1) is deemed limited only to provide priority to the subject matter claimed in the divisional application.

Since the filing date of the non-provisional parent application of the divisional application in India dates back to the provisional filing date – if present, the divisional application in India still has the priority of the provisional application. However, the test for the divisional will be based on the plurality of inventions in the “claims” of the parent nonprovisional application.

In this regard, it is worth noting that in US, even if a divisional application is based on the non-provisional application and the filing date of the divisional application is considered as the filing date of the parent non-provisional application (which may be a different date than the filing date of the provisional application), it can nevertheless claim priority of the provisional application, if any, of the parent application.

Comparing “Patent of Addition” and CIP

The “patent of addition” provision in India allows for filing improvements or modifications over the invention disclosed in the parent application. The “patent of addition” provision in India may best be compared with the “continuation in part (CIP)” provision in US, than with the provision of “continuation” application, as both needs to establish novelty over the invention disclosed in the respective parent applications.

Comparing the claiming in patent of addition and CIP, while a CIP includes claims based on the new specification and novel over the parent application, it can additionally include claims based on the original specification also. There is no provision in a patent of addition to include any claims based on the specification of the parent along with the claims based on the new specification. Section 56 (2) India patents act clearly states that “For the removal of doubts it is hereby declared that in determining the novelty of the invention claimed in the complete specification filed in pursuance of an application for a patent of addition regard shall be had also to the complete specification in which the main invention is described.” Therefore, all claims of the patent of addition need to establish novelty over the specification of the parent application. Hence, if the claims presented in the parent application do not suitably cover the invention disclosed in that specification, the same cannot be corrected by filing a patent of addition.

Conclusion

Thus, at least for the time being, it can be concluded that for all practical perspectives, the provision of divisional application in India is similar to the provision of divisional application available in the US and does not in any way caters to the claiming provisions of continuation application of the US. The patent of addition provision in India also does not permit additional claims based on the parent specification. Therefore, when it comes to filing a patent application in India, the golden rule of drafting that “never disclose anything novel in the specification that you are not claiming” needs to be more strictly followed as compared to claiming in US, as there is no second chance in India to claim what is left out in the set of claims presented in the application.


Claiming in India and in US, How helpful are the continuing applications?

Article by Geetha Karavoor

https://www.lexology.com/library/detail.aspx?g=9fcfb94f-02b4-451d-840c-162305a53fe2

Article was 1st published on Lexology

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