Important issues
- Whether the application made by UCB Pharma is a valid divisional application under Section 16?
- Whether the subject matter claimed therein lacks inventive step?
Summary
Factual matrix
UCB first filed a parent application IN/PCT/2002/00019/MUM with 84 claims that were later restricted to 67 to conform to PCT standards. The First Examination Report (FER) issued on 26/10/2006 raised several objections to various claims in the application inter alia, on the grounds of lack of novelty, prohibited subject matter, vagueness.
In response, UCB amended the while filing a response to the FER. In further proceedings, the Controller objected to the amended claims on the ground that the amendments were in contravention of Section 59. The Examiner also maintained the objection on lack of unity of invention.
In view of the fact that the claims of the parent application were the Appellant proceeded to file a divisional application. As per practice, the divisional application was filed with the original claim set and later restricted at the time of filing a response to the First Examination Report. The claims were further restricted during the hearing.
The IPAB was now under duty to consider the validity of this divisional application, as under Section 16 of the Act. The crux of the matter was whether the divisional application repeated in essence the claims present in the parent application.
Held
The evidence documented shows that the divisional application was filed with claims identical to claims 1-67 of the parent application. The Appellant UCB had admitted to the fact that they were “constrained to file a divisional application due to the restriction of the parent claims”. This goes against the teachings of Section 16. Section 16 provides for filing of a divisional application only when an objection is raised by the Controller regarding unity of invention in the subject matter and such objection can be remedied only by filing a separate application. Objections raised on other grounds cannot be remedied by way of filing divisional applications. Furthermore, repeating claims previously rejected in the parent application by way of a divisional application is seen as an attempt to revive invalid claims, and the same is legally impermissible.
Since the divisional application is not maintainable, it is infructuous to delve into the issue of novelty of the subject matter.