Divisional Applications

1When an application is divided out of the original application, it is termed a divisional application. Divisional applications are filed to overcome objections on plurality of inventions, as the law allows only one application per invention. (Patents Act 1970, s 7(1).) The applicant may divide the invention into separate applications where the claims of the complete specification relate to more than one invention. The applicant may also, to meet the official objection raised by Controller, divide the application and file two or more applications as applicable for each of the inventions. Such divisional application shall be deemed to have been filed on the date on which the original application was made. This method of granting the same priority date to the divisional application as that of the original application is known as ante dating. (The expressions 'ante-dated' and 'ante-dating' do not appear in the explanation to s 16(3) though the sub-section imports the idea. The expressions, however, are mentioned in s 11(7).)

2The divisional application shall be accompanied by a complete specification, which shall not include any matter not in substance disclosed in the original application. (Patents Act 1970, s 16(2).) In other words, no new matter shall be added in the divisional application. If new matter is found in the divisional application, it can be amended before the grant to exclude such matter. The complete specification of the original application or the divisional application may be amended, in such a manner, that neither of the specifications includes a claim for any matter claimed in the other. (Ibid, s 16(3).) An amendment to divide the application into two new applications can be refused by the Patent Office on the ground that the patent had already been granted and that such procedures were available only before grant. (See Ogawa Chemical Industries Ltd's Applications (1986) RPC 63.) There is no provision to file a divisional application after the grant to overcome a finding of plurality of invention. (See Mobil Oil Corpn Application (1969) RPC 586, [1969] FSR 347, p 352.) The Controller is bound to refuse a divisional application the disclosure of which extends beyond that of the main or parent application. (See Van der Lely's Application (1987) RPC 61.) A specification filed along with the divisional application shall contain a specific reference to the number of the original application. (Patents Rules 2003, r 13(2).)

3The purpose of a divisional application is to protect the rights of an applicant who has disclosed more than one invention in the parent application. It should not be allowed for merely claiming narrower or broader protection for the same invention. (See Armstrong Kropp Development Corpn's Applications (1974) RPC 268; Abbot Laboratories' Application (1955) 72 RPC 345, p 346.) In cases where a divisional application is made along with a request for post-dating, the Patent Office will not be obliged to deal with the application after the normal period of acceptance has expired and which has not been renewed within the extended time. (See Standard Magnet AG's Application [1974] FSR 393, (1977) RPC 359, pp 360-61.) The Controller has complete discretion to allow ante-dating of a divisional application provided it does not ante-date it to a period earlier than the parent application.

4The Controller has the power to make orders with regard to division of applications. An order made under s 16 is appealable.