Cite parent for lack of Novelty n Inventive Step

[SC]

In a patent of addition application, the parent application can be cited to allege lack of Novelty but not lack of Inventive Step. On similar lines, please indicate if the parent application can be cited to allege lack of Novelty and/or Inventive step in the Divisional.

[Dr. Venkata Subramanian Raman]

Applications are split into divisional applications due to lack of unity, which means there are two inventions filed as one application. All the divisional applications need to satisfy the conditions of novelty and inventive step.

[SC]

The question is not about divisional application satisfying the requirements of Novelty and Inventive Step.

It is about whether the parent application can be cited as prior art to the divisional application to allege lack of Novelty or Inventive step.

I hope the question is clear now.

[Vijeta Sharma]

According to Section 16(2) the complete specification for divisional application shall not include any matter in substance disclosed in the complete specifications filed in persuence of the first mentioned application and Section 16(3) states that neither of the said complete specification (Parent application or Divisional application) includes a claim for any matter claimed in the other.

Hence , it can be concluded that the parent application can be cited to allege lack of Novelty or Inventive steps for divisional application.

However, in case of patent of addition according to Section 56 of the Patents Act, the patent of addition cannot be revoked or invalidated for lack of inventive step in light of the parent application. Thus the main patent or patent application cannot be cited by the examiner to show lack of inventive step in the patent of addition. The Examiner, however, can cite the main patent or patent application to establish lack of novelty.

[Dr. Venkata Subramanian Raman]

Thanks for raising this question. This is a good question and we are working on a write up to clarify this with an example, we will post this soon.

 

Venkat

[Harshavardhan]

parent application cannot be cited as prior art to the divisional application to allege lack of Novelty or Inventive step because both the parent and divisional application will have same date of filing. Antedating.

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