IMPORTANT ISSUE
Whether the Controller General erred in rejecting divisional application on the basis of conflict of claims with already examined parent application under Section 16.
SUMMARY
Short description of Patent: The patent in divisional application presents an invention that relates to a laundry detergent composition comprising a combination of specific enzyme with a specific random-graft copolymer. The present invention is a combination of specific components (i) a glycosyl hydrolase, (ii) a random graft copolymer, and (iii) detersive surfactant. The parent application consists of claims that relates to a composition comprising (i) a glycosyl hydrolase, (ii) amphiphilical koxvlated grease cleaning polymer and (iii) detersive surfactant
FACTUAL MATRIX:
- The parent application was granted on 31 January 2017. The FER of the parent application indicated two sets of distinct inventions. The appellant deleted some of the claims in response to the objections of the controller and a divisional application was filed on 06 July 2015.
- The divisional application was examined under Section 12 and 13 of the Act and a first examination report (FER) was issued in 2018. The Respondent raised the objection that claims of the divisional application to be in conflict with those of the parent application.
- The Controller maintained the objection even after amended claims divisional application and observed that they are conflicting with claims of the parent application during the course of hearing. Ultimately the Controller passed the Order in January 2020 refusing to grant the patent on divisional application on the ground that the claims of the divisional application were in conflict with those of the parent application. This appeal is against the said order.
SUBMISSION BY APPELLANTS
The divisional application was filed in response to objection of parent application on the ground of two distinct inventions and these are allowable under Section 16(1).
SUBMISSION BY RESPONDENTS
According to the respondent the essential technical feature of a laundry detergent composition comprising glycoxyl hydrolase having enzymatic activity towards both exloglucan and amorphous cellulose substrates and a random graft co-polymer is already claimed in parent application. Thus, parent application is not fit for divisional under section 16(3).
HELD
The court explained that, in view of already examined parent application, the refusal of divisional application on ground of conflict with claiming of the parent application so as the essential technical features are no distinct components of composition is unacceptable. Such type of objections may be raised in cases if it is found that substantial amendments made in the divisional application likely enlarge the scope of invention claimed in the parent application.
Therefore, impugned order is set aside
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Citation OA/47/2020/PT/DEL