Divisional applications under Indian Patents Act: Section 16 - What has the Delhi High Court ruled?

Division of Patent Applications is provided under Section 16 of the Indian Patents Act and it outlines the conditions based on which a patent application could be divided into child applications, often referred to as divisional applications. However, these conditions have been subject of discussion amongst the patent practitioners and patent office/IPAB. In particular, there have been several decisions by the IPAB, which have interpreted Section 16 for the purpose of providing more clarity to the practitioners. The Delhi high court has now put the final seal on the legal position as was evolved by the IPAB in a recent decision pertaining to Boehringer Ingelheim International Gmbh vs The Controller of Patents, C.A. (COMM.IPD-PAT) 295/2022.
The video herein provides an insight into the evolution of the legal position pertaining to Section 16 as has been sealed by the Delhi High Court for now. The decision basically says that a divisional application could be derived from a parent patent application if the claims of the parent application include distinct inventions. Thus, the distinct inventions sought to be covered in the divisional application should have been claimed in the parent application and mere disclosure in the complete specification is not sufficient.
Watch the video to understand the evolution of Section 16 and please share your questions/comments.

[@AbinTSam]

Brilliant as always. Would love to hear your critical analysis on this aspect, as the judgement does seem to make the scope of divisional application very restrictive.

[@lex-thelighthousebeacon]

In the meantime, you may refer to my paper on the issue - www.researchgate.net/publication/367509191_Interpretational_Dilemma_on_Divisional_Patent_Applications_in_India

[@shilpi9407]

Hello Sir,
Great video ,one question is suppose I've filed 2 inventions in provisional application do I need to file 2 C.S within 1 year of P.S.
Also I am still not getting notifications of your videos ..

[@lex-thelighthousebeacon]

When you say 2 inventions, I assume those are distinct inventions not related by a single inventive concept. Ideally, you should file two CS as opposed to filing both the inventions in same CS and later on deriving a divisional out of it. This would save you prosecution time as two CS may be processed in parallel while the CS+divisional would be serially processed taking more time to secure protection.

[@shilpi9407]

@@lex-thelighthousebeacon thanks sir👍