Divisional or Continuation Application? Abbott Re-Files the Same Application

Press Release 26 May 2009

Updating our earlier post, we have now obtained a copy of Abbott’s ‘divisional’ application. A copy of 726/MUMNP/2009 (‘726) can be downloaded here.

As predicted, the disclosure and claims of the ‘726 application are identical to Abbott’s first application, 339/MUMNP/2006 (‘339).

At this moment in time, we have an unusual situation where Abbott has two pending applications for the same product – the first of which has been opposed and has had a hearing to decide whether it is patentable. With a decision due shortly on the first application, we wait to see whether Abbott will abandon its ‘339 application before a decision is issued and then attempt to start afresh with ‘726. Or, will Abbott amend the claims of ‘726 to be different to ‘339 – which we believe will be difficult to do given that they have already covered all relevant subject matter of the claimed invention in the first application.

If Abbott does abandon its first application, it creates a situation where section 16 is open to abuse by applicants. Rather than being a provision entitling applicants to divide out an application, it will be a provision used for filing endless continuation applications until a patent is granted – a problem which the U.S patent system faces and has unsuccessfully tried to address. This problem is compounded in India given that electronic access to complete specifications of published patents is still unavailable. It could also make the pre-grant opposition system less effective and resource intensive if opponents have to be continuously vigilant and re-file oppositions over and over again. The Indian Patent Office would be well advised to avoid this from happening.

We will be watching these developments closely and post updates as they happen.

 

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