The BASF judgment: how timing uncertainty impacts divisional patent applications in India

Patent applicants in India often face a practical question: what is the last possible opportunity to file a divisional patent application? While the Indian Patents Act (1970) specifies this can be done “any time before the grant of the parent patent application,” determining the precise moment of grant proves challenging in practice due to the lack of procedural safeguards. This timing consideration gained particular attention in the recent Madras High Court decision BASF SE v. The Deputy Controller of Patents and Designs [C.M.A.(PT) No. 38 of 2024], where the court examined the refusal of a divisional application that was filed on the same day as, but after, the grant of the parent patent application.

Understanding current framework

Divisional applications are governed by Section 16 of the Indian Patents Act (1970), which allows applicants to split distinct inventions disclosed in a parent application into separate filings. The provision states that divisional applications can be filed “any time before the grant of the parent patent.” The provision stems from the 2005 amendment to the Patents Act, which replaced the earlier phrase “before the acceptance of the specification” with “before the grant of the patent.” While this change aimed to extend the filing window, it created practical challenges by linking the deadline to an unpredictable event – the grant. This timing requirement particularly affects voluntary divisional filings, where applicants identify distinct inventions later in prosecution. Since patent grants can occur at varying intervals after filing examination responses or hearing submissions — sometimes within days, other times after months — this unpredictability creates significant risk. Applicants may lose their filing opportunity without warning, closing the window to protect distinct inventions despite acting in good faith.

The BASF case: a textbook example of timing uncertainties

In the recent BASF judgment, the Madras High Court — while hearing an appeal under Section 117A of the Indian Patents Act (1970) — examined the refusal of a divisional application filed by BASF on the same day its parent patent was granted. The Patent Office rejected the application, reasoning that it was filed after the grant and, therefore, did not satisfy the statutory requirement of being filed “before the grant.”

BASF challenged this refusal, contending that it had acted in good faith and that it was impossible to know the exact timing when the grant of the parent patent would occur. The appellant argued that the practical difficulty of not knowing the exact timing of the grant made it impossible to ensure compliance with the “before grant” requirement.

The High Court acknowledged these difficulties, holding that filing a divisional application on the same day as the grant satisfies the “before grant” requirement of Section 16(1). The court emphasized that applicants cannot be expected to foresee the exact moment of the grant without formal notification mechanisms. Additionally, noting a procedural lapse, the court found that the Patent Office had improperly cited distinctiveness objections in its refusal order without prior notice in the hearing, leading to the matter being remanded for reconsideration on merits.

Global insights and the way forward

Jurisdictions like the US, Europe, and Australia provide structured mechanisms — such as the United States Patent and Trademark Office’s (USPTO) Notice of Allowance or the European Patent Office’s (EPO) Intent to Grant — to ensure clarity before grant. These mechanisms offer applicants a defined window before the grant, preventing the uncertainty that led to the BASF dispute. In contrast, India lacks such safeguards, leaving applicants vulnerable to unpredictable grant timelines. The now-abolished IPAB, in ESCO Corporation v. Controller of Patent (2020), also recognized this gap and recommended the introduction of an “intimation to grant” system to bring clarity and align India’s practices with global standards.

Practical recommendations for applicants

Given the current lack of formal safeguards, applicants should file divisional applications well in advance of the anticipated grant and monitor parent applications closely after responses or hearing submissions. As the BASF case demonstrates, while diligent planning is key, filing a divisional on the same day as the parent grant cannot, by itself, justify refusal.

Final thoughts

The BASF judgment highlights the challenges applicants face under India’s current framework and the need for procedural reforms. The 2024 Patent Rules amendments introduced several significant changes, including specifying that divisional applications can now be based on the parent application’s specifications, not just its claims. Building on this progress, introducing an Intimation to Grant mechanism would further align India’s patent system with global practices, making it more predictable and applicant-friendly.

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