Chapter 6
Divisional Application and Patent of
Addition
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Divisional Application |
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General An applicant may, at any time
before the grant of a patent, if he so desires, or with a view to remedy the objection
raised by the Controller on the ground that claims of a complete
specification relate to more than one invention, may divide the application
and file further application(s) in respect of invention(s) disclosed in the
provisional or complete specification already filed. Examination of a
divisional application is always done vis-à-vis the main application. If two
or more divisional applications are filed based on a main application,
examination of the second or subsequent divisional application shall be done
vis-à-vis the main application, and the other divisional application(s),
examined earlier, to avoid double patenting. The whole patent family, in such
cases, is available to the Examiner on the Official database. The date of filing of a divisional
application shall be the same as that of the main application, from which it
has been divided. The term of patent for a
divisional application shall be twenty years from the date of filing of main
application or international filing date in case the application was divided
out of National phase application under PCT. |
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Contents
The Divisional Application should
be accompanied by a Complete Specification. The Divisional Application(s)
shall not include any matter not in substance disclosed in the main
application. The main application and the Divisional Application(s) may be
amended to ensure that neither of the complete specifications includes a
claim for any matter claimed in the other. |
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Priority The Divisional Application is
treated as a substantive Application and is accorded the date of filing of the
main Application along with a separate application number. The Claims of Divisional
Application shall have the same priority date as that of the main
application. A divisional application shall be examined vis-à-vis the first
mentioned application (main or parent) so as to avoid claim overlap resulting
in double patenting. A divisional application is
treated as a substantial application in the sense that: a) separate fee(s) is required to be
paid; b) separate request for examination
requires to be made; c) it can be prosecuted separately; d) it results in an independent patent. |
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Appropriate
office If a divisional
application is filed in a jurisdiction other than that of the main
application, the Examination is done vis-à-vis the main application. |
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Reference The Complete Specification accompanying
the Divisional Application shall contain a specific reference to the main
application number. |
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Fee For all purposes under the Patents
Act, the Divisional Application is treated as a substantive application and,
hence all fee applicable to a patent application shall be payable. |
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Patent
Of Addition |
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General a) When an applicant comes up with an
improvement or modification of the invention described or disclosed in main
application for which he has already applied for or has obtained a patent,
the applicant may make an application for patent of Addition. b) An Application for a Patent of
Addition shall be filed on the same or subsequent date of filing of the
Application for main Patent. c) A Patent of Addition shall be
granted only after the grant of the main patent. d) When a patentee holds two patents,
it is possible to convert one of the independent patents to a patent of
addition of the other, if the subject matter was an improvement in or
modification to the other patented invention. e) There is no need to pay separate
renewal fee for the Patent of Addition during the term of the main patent. f)
A patent of addition expires along with the
main patent. However, if the main patent is revoked, the patent of addition
may be converted into an independent patent, if so requested by the patentee. g)
Date
of filing shall be the date on which the application for patent of addition
has been filed. |
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Novelty
and inventive step An application
for Patent of Addition cannot be challenged on the ground of lack of
inventive step with respect to the disclosure in the main application or
patent. But the disclosure in main application or patent may be cited for
novelty against the application for patent of addition. |
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Reference The complete specification of
application for patent of addition shall include specific reference to the
number of main patent or the application for main patent, as the case may be,
and a definite statement that the invention comprises an improvement in, or a
modification of the invention claimed in the specification of the main
patent, granted or applied for. |
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