Dilemma resolved for a coincidence in which the parent application was granted on the same date of the Divisional Application

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Dilemma resolved for a coincidence in which the parent application was granted on the same date of the Divisional Application

The Madras High Court heard an appeal filed by the EU chemical manufacturer BASF SE (appellant) under section 117A of the Patents Act, 1970 against a rejection order (dated 01.01.2024) by the Patent Office for their divisional application (Application No. 201945034726). According to the order the appellant has failed to meet two basic requirements for filing a divisional application i.e. the delay in filing the application i.e. after the parent patent grant and second, lack of plurality of invention.

In this case, the appellant filed the divisional application under section 16 of the Patents Act on August 28, 2019 and unfortunately, the Controller (Respondent) granted parent application on the same day.

Section 16 of the Patents Act as follows:

“The Indian Patent Act mandates that 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 one or more further application under section 16 in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.”

In contrast, in this case, the appellant had not filed the divisional application after the grant of the parent patent application, rather the appellant filed the divisional application within the timeline and it was a coincidence that the parent application was granted on the same date.

In said case the learned counsel for the appellant (BASF) pointed out two main issues in the appeal against this order. Read as follows:

1. It is impossible for the appellant to know the exact timing when the patent was granted, in favour of the appellant. There was no way appellant would have known when exactly their parent patent application would be granted and therefore the filing of the Divisional Application on the same day was a coincidence.


2. Appellant claimed a violation of principles of Natural Justice as they were not informed about the grounds of non-distinctiveness of their divisional application claims (lack of plurality) before the rejection order.