Filing Divisional Applications in India: Strategic Considerations and Recent Developments
The 2024 amendments to the Indian Patent Rules, combined with landmark judicial developments, have reshaped the landscape for filing divisional applications in India—presenting both enhanced opportunities and unique risks for applicants across biotech and pharmaceutical fields. Below is a refined review of these developments, strategically tailored for patent professionals, followed by actionable key takeaways for portfolio optimization in India.
Introduction
Recent amendments to the Indian Patent Rules in 2024 and pivotal judicial guidance from the Delhi High Court’s Division Bench in Syngenta Limited v. Controller of Patents and Designs (2023) have provided long-awaited clarity regarding the divisional application regime. These changes empower applicants with greater flexibility, enabling more robust protection for inventive concepts disclosed, but not necessarily claimed, in initial patent specifications.
Statutory & Judicial Foundations
Section 16 of the Patents Act, 1970 forms the backbone of divisional application practice in India, allowing filing “at any time before the grant” for inventions disclosed in the specification. The 2024 introduction of Rule 13(2A) explicitly permits “one or more further applications,” extending divisional opportunities and codifying progressive judicial interpretation seen in Syngenta, while reversing restrictive effects from prior case law such as Boehringer Ingelheim International GMBH v. Controller of Patents (2022).
The Division Bench in Syngenta confirmed: (1) that divisional applications are equally available, either voluntarily or to address unity of invention objections; and (2) that the subject matter of a divisional application is not limited to originally-claimed inventions, but encompasses all aspects “disclosed in the provisional or complete specification.” This broader interpretation aligns Indian practice with global standards, notably the U.S. continuation system.
Timing: Opportunities and Hazards
Recent procedural amendments reduced the examination request window to 31 months from the earliest priority, accelerating prosecution timelines. Notably, the absence of any notice of allowance system means that grant decisions can occur without prior warning; a divisional filed after parent grant will be refused, as highlighted in BASF SE v. The Deputy Controller of Patents and Designs (2024), unless principles of natural justice require reconsideration. This underscores the necessity for proactive monitoring of procedural status.
Double Patenting & Claim Structure
Sections 7(1) and 46(2) enshrine the “one invention, one patent” principle, operationalized through Section 16(3) which mandates distinct, non-overlapping subject matter for parent and divisional applications. Controllers retain the authority to direct amendments to ensure compliance.
Procedural Streamlining
Under Rule 24B, divisionals filed during active parent prosecution benefit from expedited publication and examination—within one month each—further incentivizing timely and strategic filings.
Strategic Recommendations
Proactive Portfolio Management
Due to accelerated examination timelines and the risk of unexpected grant, regular portfolio review is recommended. Identify distinct inventive concepts early in prosecution and finalize divisional decisions concurrently with preparation of FER responses or written submissions post-hearing.
Technology-Specific Strategies
Biotechnology: Exploit divisional flexibility to protect complex molecular structures or novel functions separately.
Pharmaceuticals: Isolate different inventive concepts, especially under Section 3(d)—to maximize the scope and maneuver around potential objections.
Medical Devices/Software: Consider divisionals to separately prosecute apparatus and method claims, or different technical implementations.
Global Coordination
Synchronize divisional filings with international strategy, monitoring parallel opportunities in major patent jurisdictions. This helps maintain claim consistency, secure priority chains, and avoid redundant filings.
Conclusion and Key Takeaways
The 2024 amendments, combined with progressive judicial interpretations, have created a more flexible and applicant-friendly environment that aligns Indian practice with international standards while maintaining appropriate safeguards against abuse. The following may be kept in mind while devising a divisional strategy in India:
Expanded Subject Matter: Multiple divisionals can be filed for any invention disclosed in the specification—claims need not be present in the parent application.
Voluntary Filing: Unity of invention objection is no longer a prerequisite; divisionals may be filed at the applicant’s discretion during pendency.
Critical Timing: Accelerated prosecution and lack of advance notice make timely divisional filing essential; once a patent is granted, divisional rights are lost.
Distinct Claim Sets: Ensure parent and divisional claims are non-overlapping to avoid double patenting objections and facilitate grant.
Sector-Specific Planning: Tailor divisional strategies to the unique requirements of biotech, pharma, software, and devices for optimal protection.
Regular Portfolio Review: Integrate routine divisional opportunities assessment into post-FER and hearing response workflow.
Global Alignment: Coordinate with continuation/divisional filings abroad for aligned and robust international protection.
These updates mark a new era for divisional applications in India, enabling applicants to realize the full value of their innovations—provided that timing and claim strategy are rigorously managed throughout the prosecution process.
This post was written by Lisa Mueller with insights from Amrish Tiwari and Dr. Deepa K. Tiku from KNS Partners.