Summary
The Delhi High Court held that there is no statutory requirement to issue a pre-grant notice before granting a patent under Section 43. It further clarified that a divisional application under Section 16 must be filed before grant of the parent patent.
Background
Yangtze Memory Technologie Co Ltd. (“Applicant”) filed a patent application bearing number 202127020980 on 9 May 2021. The application was subsequently examined by the patent office and the Controller issued a First Examination Report (FER) raising objections under Section 10(5) on plurality of inventions. The Applicant responded to the FER by asserting that the claims were linked by a single inventive concept.
Pursuant to the FER reply, a hearing was conducted to discuss the substantive issues. Consequently, the Applicant filed their written submissions on 22 July 2024, and the same were accepted by the Controller, leading to the grant of a patent on 26 July 2024 under Section 43(1).
On 31 July 2024, after the grant, the Applicant attempted to file a divisional application under Section 16, but was unable to file the same as the online filing systems did not permit the same. The Applicant finally approached the High Court seeking directions to accept the divisional application and reopen the filing window.
Issues Before the Court
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- Whether a divisional application under Section 16 of the Patents Act can be filed after the grant of the parent patent?
- Whether the Controller violated principles of natural justice by granting the patent without prior notice and thereby closing the window to file a divisional.
- Whether the petitioner had communicated a valid intention to file a divisional before grant.
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Applicant’s Arguments
The Applicant argued that it had clearly expressed its intention to file a divisional application during the hearing and in written submissions dated 22 July 2024. It submitted that the Controller had assured an extended hearing if issues remained unresolved. By granting the patent on 26 July 2024 without further notice, the Controller closed the statutory window to file a divisional application.
The Applicant argued that this action deprived it of its statutory right under Section 16(1). It contended that it acted diligently and in good faith and that the inability to file the divisional through the online system should not prejudice its rights.
The Applicant submitted that it was not given an opportunity of hearing before the grant and that the abrupt grant violated principles of natural justice because it had reserved its right to file a divisional.
Patent Office’s Arguments
The Indian Patent Office argued that Section 16(1) clearly permits filing of a divisional only before the grant of the parent application. The Applicant had more than three years to file a divisional, but did not do so. Furthermore, the IPO submitted that the Applicant never formally filed or requested the filing of a divisional before grant. The written submissions only stated that the Applicant would consider filing a divisional if the Controller disagreed with its arguments.
On the aspect of an abrupt grant, the IPO submitted that once objections were resolved, Section 43 mandates the grant of the patent as expeditiously as possible. There is no statutory requirement to issue a pre-grant notice before granting a patent. Therefore, once the patent was granted, it attained finality, and the Patents Act does not permit post-grant division of applications.
Court’s Analysis
The Court examined Section 16(1), which states that a person who has made an application may, at any time before the grant of the patent, file a further application in respect of an invention disclosed in the specification. The court observed that Section 16(1) clearly requires that the divisional application be filed before the grant of the parent patent. The court observed that the statutory language is unambiguous.
The court noted that the Applicant had a window from 9 May 2021 to 26 July 2024 to file a divisional application, but the Applicant did not file any such application within this period.
The court also observed that the Applicant chose to contest the objection under Section 10(5) and argue that the claims formed a single inventive concept. The Applicant did not elect to file a divisional while prosecution was pending.
The court said that the willingness to file a divisional as recorded in the written submissions dated 22 July 2024 was conditional. It was to be exercised only if the Controller rejected the arguments on the plurality of inventions. Since the Controller accepted the submissions and waived the objections, the contingency did not arise.
According to the court, once the patent was granted on 26 July 2024, the statutory window under Section 16(1) closed. The attempt to file a divisional on 31 July 2024 was therefore beyond the permissible period.
The court also examined Section 43, which mandates that once an application is found to be in order for grant, the patent shall be granted as expeditiously as possible. The court observed that there is no statutory provision requiring the Controller to issue prior notice before granting a patent.
The court was therefore of the opinion that once all objections were waived and requirements satisfied, the Controller was bound to proceed with the grant. It rejected the contention that the grant was abrupt or illegal.
The court held that the Applicant’s allegation of violation of natural justice was without merit because the Applicant had full opportunity during prosecution and yet failed to file a divisional before grant.
Conclusion
Dismissing the writ petition, the Court held that a divisional application under Section 16(1) must be filed before the grant of the parent patent. The Applicant’s attempt to file a divisional after grant was not permissible in law and there was no statutory requirement to issue a notice before grant under Section 43.
Case Citation: Yangtze Memory Technologie Co Ltd v. Union of India & Anr., W.P.(C)-IPD 10/2025, decision dated 3 February 2026, High Court of Delhi. Available on https://indiankanoon.org/doc/181996833/
Authored by Gaurav Mishra, BananaIP Counsels