Yangtze Memory Technologies Co Ltd filed Indian Patent Application No. 202127020980 (parent application) on 9 May 2021 claiming priority from PCT/CN2018/119908 dated 7 December 2018 for a novel 3D NAND memory device and method. The First Examination Report issued on 23 May 2022 objected under Section 10(5) for plurality of inventions not linked by a single inventive concept. After response, hearing on 8 July 2024, and written submissions on 22 July 2024 (wherein petitioner expressly recorded intent to file divisional application if objections persisted and noted Controller's assurance of extended hearing), the Controller unexpectedly granted the patent on 26 July 2024 without further notice or hearing, thereby closing the window for filing a divisional application. The petitioner immediately attempted to file the divisional application and related petitions under Rules 137/138 but was prevented by the e-filing system; despite repeated communications, the grant stood. Aggrieved, the petitioner filed the present writ petition seeking setting aside of the grant order and direction to permit filing of divisional application. The court dismissed the writ after observing that post grant of Parent Patent, no application for divisional application can be filed.
Points of Law Settled:
Where an applicant expressly records intent to file a divisional application in written submissions post-hearing and the Controller acknowledges the same while assuring further/extended hearing, sudden grant of the parent application without prior notice or promised hearing deprives the applicant of the statutory right to file a divisional application under Section 16 and violates principles of natural justice (Para 8.5–8.8).
The Controller is obliged to afford reasonable opportunity (including promised extended hearing) before finally deciding grant especially when applicant has flagged plurality of inventions and conditional intent for divisional filing; failure to do so renders the grant order procedurally infirm and liable to be set aside (Para 8.3–8.5, 10–12).
Post-grant attempts to file divisional application are statutorily barred under Section 16(1) as the window closes upon grant of the parent; however, where grant occurs due to procedural irregularity and denial of natural justice, the Court may quash the grant and restore the application to enable divisional filing (Para 8.6–8.7, 13–15).
Bona fide diligence by applicant (prompt communication, repeated attempts to file divisional despite system disablement) supports exercise of writ jurisdiction to correct patent office error and prevent miscarriage of justice (Para 8.6–8.7).
Case Title: Yangtze Memory Technologies Co Ltd Vs Union of India:03.02.2026:W.P.(C)-IPD 10/2025: 2026:DHC:981: Hon’ble Ms. Justice Manmeet Pritam Singh Arora
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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