Refuse, Require Amendment, and Division of Applications
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Refuse, Require Amendment, and Division of Applications


Powers of controller: the controller has certain
specific powers that is being wasted on the controller under certain provisions of the
act, and he also has certain general power. So, let us first look at the specific powers
that the controller has. Section 16 details the powers of the controllers
to make orders respecting division of application. In case of an application having more than
one invention the controller can make some directions to divide to required applicant
to divide the application. 17 contains the powers of the controller to
make orders respecting dating of application. That application could be antedated or post
dated. 18 details of powers of the controller in
cases of anticipation and 19 details the powers of the controller in case of potential infringement. 20 details the powers of the controllers to
make orders regarding substitution of applicants. Now these are some of the specific powers,
where the controller is allowed to exercise those powers in detail. We will look at these sections in detail. Section 15 power of the controller to refuse
or requires amendments amendment of application etcetera in certain cases where the controller
is satisfied that the application or any specification or any other documents filed in person that
of does not comply with the requirements of the act or any rules made there under. So, we have gone beyond 14. 14 is a state where there is an adverse report
the objections are communicated to the applicant and the applicant assumed the applicants come
for the hearing, at the hearing the applicant is expected to clarify stand and to clear
these objections. The applicant can come for the hearing and
give your submissions or orally or and also given return submission on the objection raised
by the controller. Now after the hearing the controller feels
that the application does not comply with the requirements of the actor that controller
still feels that, even after having that hearing there are still certain things that are not
in order under the act and rules. Then the controller may refuse the application
that is one option to the controller or may require the application and the documents
to be amended to satisfaction before he proceeds with the application and refused the application
on failure to do so. Controller can either refuse the application
upfront or give an opportunity to amend if the amendment does not happen to satisfy can
he can still refuse. So, section 15 gives the power for the controller
to make any refusal of an application, and the ground for the refusal is going to be
it does not comply with the requirements of the act and the rules, the controller can
make an upfront refusal or given opportunity for the applicant to carry out amendment,
if the amendments are carried out to satisfaction it results in a grant, if the amendment is
not carried out to the satisfaction of the controller he can proceed to refuse the application. Section 16 power off controller to make orders
respecting division application. Divisional applications can be filed when
one or more inventions are claimed in a single application there is a rule on the unity of
inventions every application should only cover one invention or a group of inventions, which
are linked by what we call as single inventive concept. So, you can only file one application for
one invention, if there are more than one invention in an application the controller
would require the invention that to be separated so that they can be a divisional application
failed to separate that invention. So, if there are two inventions in a specification
as file and the controller feels that they the second invention which is also mentioned
in the complete specifications should become a separate application then the controller
can ask the applicant to file a divisional application the applicant could also voluntary
file it. So, 16(1) says that a person who has made
an application for a pattern under this act at any time before the grant of a patent if
you. So, desire or with a view to remedy and objection
raised by the controller. So, if you so, desires mean it can be done
voluntarily or with a view to remedies the objection raised by the controller means that
it can also be directed by the controller on the grounds that the claims of a complete
specification relate to more than one invention. Now this is the only ground on which you can
file the divisional, the claim in the complete specification relate to more than one invention
the law requires you to file only one application per invention this is mentioned section 10(5). File further application in respect of an
invention disclosed in the provisional or complete specification already filed in respect
of the first mentioned application. Now, 16(1) allows the applicant to file a
further application in respect of the invention disclosed in the provisional or a complete
specification already filed. So, the disclosures are already made the claims
have to be separated. So, the claims contain more than one invention,
all the claims say the claims contain two inventions A and B the applicant when he files
the divisional what is called here the further application will now remove all the claims
pertaining to invention B and put it in his further application. But the disclosure made in the provisional
or the complete which was filed earlier will remain the same. So, it is a divisional is a process of separating
the claims, because they pertain to more than one invention. 16(2) states are the further application under
subsection (1) shall be accompanied by a complete specification, but such complete specification
shall not include any matter not in substance disclose in the complete specification filed
in pursuance of the first mentioned application. Now when you make a divisional the divisional
shall have a complete specification, it is not just a case of filing near claims it should
have a complete specification, but the complete specification shall not include any matter
not in substance disclosed in the complete specification filed earlier, which means the
disclosure is going to be the same. If you file a divisional based on an earlier
filed application you are going to move the claims which pertain to the second invention
what we call invention B, but the disclosure is going to be the same you cannot include
a matter not in substance disclosed in the earlier specification, this is the wording
in 16(2). So, the disclosure is going to be the same
the claims are will look different the disclosure will be the same the claims will look different. If you compare a first mentioned application
wherever the language first mentioned application is used, we call the parent or the first application
and wherever the further application is mentioned in this section we call it the divisional
or the child. So, this is a parent and a child and a child
is created from the parent, the claims of the child and the parent will not match because
that was the objective of filing a divisional there is all the claims that pertain to the
second invention has to be removed, but the disclosure will be the same, because you cannot
add while filing a divisional, you cannot add any new substance because the divisional
will take the priority from the parent, the child will take the priority from the parent
for that reason you cannot add you matter into the divisional. 16(3) the controller may require such amendment
to the complete specification file in pursuance of either the original or the further application
as may be necessary to ensure that neither of the set complete specification includes
a claim of any matter claimed in the other. So, the controller can ensure that the claims
do not match. 13 simply states that the claims in the parents
and the claims in the child will be different. The claims in it to refuse it in using the
language of the act the claims in the first mentioned application and the claims made
in the further application will be different. So, 16(3) allows the controller to make amendments
to ensure that, what is claimed one is not claimed in the other. Explanation to 16(3) states that for the purposes
of this act the further application and the complete specification of accompanying it
shall be deemed to have been filed on the date on which the first mentioned application
has been filed which is what I meant the child will take the priority from the parent and
the further application shall be proceeded with as a substantive application and we examined
when the request for examination is filed within the prescribe period. A we saw instances in which a request for
examination for a divisional has to be accompanied by a request for publication, for the simple
fact that examination of the child can be clubbed with the examination of the parent. We saw this in 24B(2)(i) we saw that when
there is a parents that is being currently examined if a divisional is filed, then the
divisional should be accompanied by a request for examination, this is to expedite the examination
so that the examiner who’s looking at the parent can also examine the divisional. So, divisional are treated as a substantive
application, substantive application. In the sense that they are numbered differently
they are treated as a separate application they have a complete specification and it
is treated as a substantive application, but it will take the priority from its parent.

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