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Patent applicants often consider filing divisional patent applications in South Africa. This is frequently undertaken on the back of divisional applications filed in other countries, where claims of different scope are being granted and/or where unity of invention issues arise.

Firstly, to set the stage, the purpose of a divisional application in South Africa is specifically to allow for cases where a specification may contain more than one invention. This function underpins the requirement that the claims of the two applications not be coterminous, with existing case law directing that the purpose of providing for divisional applications is to safeguard the rights of an applicant who has disclosed more than one invention in a single application and is not to allow narrower and broader protection for the same invention in different applications.

With the above in mind; the most recent and relevant case law on the issue of whether the claims of a parent and divisional patent application are coterminous, and that the claims of a divisional application must perforce be different, can be found in Pharma Dynamics (Pty) Ltd v Bayer Pharma AG and another 2014 BIP 69 (SCA). 

In this case, the parent (“2002” patent) and divisional patent (“2004” patent) concerned the active pharmaceutical ingredients DSP and EE. Here, while the text of the two patents were the same (which was held to be both normal and acceptable for divisional applications), the court held that the difference between the two lies (and should lie) in the claims. The 2002 patent was expressly limited to DSP in micronised form [our emphasis]. On interpretation of claim 1 of the 2004 patent, it was found that the claim was broader than the 2002 claim in that it includes DSP having the rapid dissolution rate specified in the claim, however that the dissolution rate had been obtained, which includes, but is not confined to micronisation. On this basis, it was found by the court that the two claims are not coterminous. Based on this, it is interpreted that there is an extra integer in the form of a limitation in the 2002 patent (i.e., micronisation) which is not strictly found in the claims of the 2004 patent.

When comparing the claims of the parent and a proposed divisional application, it is important that an additional integer or limitation must be presented (whether in the parent or divisional), as was the case with the cited judgment discussed above. On the other hand, where a patent application includes two or more inventions, filing a divisional patent application directed to the separate invention is usually clear.

An option an applicant may consider is to allow a parent application to proceed to grant and, at the same time, file a divisional patent application (preferably along with a request to delay acceptance) to allow the applicant additional time to consider including or excluding any limitation/s to the claims which would not be considered coterminous to the parent application. 

As always, it is important to seek the assistance of a patent attorney well versed in South African patent law and to consider the issues on a case-by-case basis. 

Fredo Ströh

Patent Attorney

Email fredos@kisch-ip.com
Tel +27 11 324 3156

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