Inde : update on divisional application practice
The sine qua non condition to ensure the conformity of a divisional application is the existence of a plurality of inventions in the parent application.
A divisional application cannot be filed if there is no plurality of inventions in the parent application.
Furthermore, when an objection of lack of unity is raised by the Office for a pending divisional application, other divisional applications may be filed serially from this application, including after the grant, the withdrawal or the refusal of the parent application, provided that the application for which the divisional will be filed is pending.
Moreover, since the claims about a single inventive concept must be based on common structural features of the product, and not on the function and/or use of said product, two different processes for preparing or using the same product may not be covered by a single application. Consequently, they may be the subject of a divisional application.
An applicant may divide its application, at any time before its grant, and file one or more divisional application(s). Our local Indian agents recommend to file such divisional applications before or at the same time of the response regarding the parent application. Besides, the claims of the parent application must be clearly different from the claims of the divisional application(s): the claims of the parent application and the claims of the divisional application must not share a common inventive concept. Even if the parent application was rejected, the divisional application referring to it cannot be identical.
The situation in Brasil :
A patent application may be voluntarily divided in two or more applications to overcome a lack of unity of invention or another reason. Besides, a divisional application must refer to the parent application and must not exceed the matter disclosed in said parent, thus it cannot be based on a previous divisional application.
As soon as a patent is granted or the patent application is rejected or definitely abandoned, it is no longer possible to file a divisional application, even if the rejection decision is reversed in the future. Furthermore, when a divisional application is filed in response to an objection of lack of unity of invention, it is recommended to file it with the reply.
When the divisional application is filed after the request for examination of the parent application, the claims of the divisional application should be limited to the set of claims of the parent application. It is therefore not possible to add new classes or categories of claims, or new embodiments in a divisional application which were not included in the parent application. It is thus helpful for the applicant to divide its application before filing the request for examination.