Recently, in BASF SE vs The Deputy Controller of Patents and Designs [C.M.A.(PT) No.38 of 2024, judgement dated November 28, 2024], the Madras High Court addressed an important issue regarding the timing for filing divisional applications under Section 16 of the Patents Act, 1970.

Section 16 allows applicants to file a divisional application when the parent application contains multiple inventions. Notably, such divisional application must be filed before the parent application is granted.

In the instant case, BASF SE had filed a divisional application on the same day the corresponding parent patent was granted. Subsequently, the Controller refused to grant the divisional application primarily on the ground that the divisional application had been filed after the parent application was granted. This decision was based on the reasoning that the parent application was granted earlier in the day, and thus, the divisional application was filed “after” the grant of the parent application.

The Madras High Court, in its decision, adopted a practical approach and clarified that if a divisional application is filed on the same day the parent application is granted, the divisional application cannot be refused on the mere technicality of timing. Put differently, when both events occur on the same day, there cannot be a clear distinction between “before” and “after”. The Court considered the circumstantial reality that it is not possible for an applicant to know the exact time of grant of patent.

The impugned order was thus set aside and the divisional application was remanded back to the Patent Office for fresh consideration.

This judgment reinforces the need for a more pragmatic and fair approach in the application of patent law, where procedural issues should not unfairly disadvantage applicants, especially when the events are beyond their control.