The order of the Division Bench (DB) of the Delhi high Court in Syngenta Ltd v Controller of Patents and Designs brought an overdue clarity on the interpretation of Section 16[1] of the Indian Patents Act, dealing with divisional patent applications.
Syngenta Ltd filed an appeal[2] before a single judge of the Delhi High Court against the order of the Controller of Patents refusing its divisional patent application[3] on the grounds that it is not a valid divisional as there was no plurality of inventions in the claims of the parent application. In its appeal, Syngenta disagreed with the Controller of patent’s interpretation of the ambit of divisional application under Section 16 of the Patents Act.
During arguments, the Respondent relied upon Boehringer Ingelheim International GMBH v. The Controller of Patents (the Boehringer case) and argued, that the interpretation of Section 16 of the Act by the Controller of patents while refusing Syngenta’s application is correct and is in-line with the views expressed in the Boehringer case. In the Boehringer case also, it was held that if the plurality of inventions is not contained in the claims of the parent application, the divisional application would not be maintainable. The Boehringer case further held that permitting the filing of divisional applications wherein plurality of inventions is not found in the claims, would be contrary to the fundamental rule of patent law, “what is not claimed is disclaimed.”
The Single Judge, however, disagreed with the views expressed by the co-ordinate bench in the Boehringer case and observed that the Boehringer case essentially reconstructs Section 16 of the Act and erases the phrase “disclosed in the provisional or complete specification already filed” and substitutes the same with the word “claims”, and therefore not justified. The Single Judge also observed that the issue of plurality of inventions being embodied in the original claims of the parent application should apply only in a situation where the divisional application is being filed based on an objection raised by the Controller and not when a division application is filed by the applicant suo-moto.
Considering the above, the Single referred the matter to the DB and put forth 2 questions of law:
“(i) Does the requirement of a plurality of inventions being contained in the parent application, in order for a Divisional Application to be maintainable, apply even where the Divisional Application is filed by the applicant suo moto, and not on the basis of any objection raised by the Controller?
(ii) Assuming that the requirement of a plurality of inventions in the parent application is necessary for a Divisional Application to be maintainable, does the plurality of inventions have to be reflected in the claims in the parent application or is it sufficient if the plurality of inventions is reflected in the disclosures in the complete specifications accompanying the claims in the parent application?”
Interestingly, the DB did not agree with the judgment in Boehringer Ingelheim and overruled the same. The DB held that :
- There is no distinction or dichotomy with respect to Divisional Applications based on whether the same is filed suo-moto or due to an objection raised by the Controller. The Court held that whether the divisional Application is filed by the applicant suo-moto or to remedy an objection raised by the Controller, there has to be a plurality of inventions;
- The Division Bench held that a Divisional Application would be maintainable even if the plurality of inventions is disclosed in the provisional or complete specification of the parent.
The DB in reaching the above conclusion observed that there is no justification to restrict the filing of a Divisional Application only to a situation where the plurality of inventions is found in the claims, as this would ignore the significance of the expression “disclosed in the provisional or complete specification” used in the provision. The DB further took into account Article 4G of the Paris Convention[4] in arriving at the above conclusion and held the above reading of Section 16(1) of the Patents Act to be in line with the same. The DB also felt that the principle “what is not claimed is disclaimed” should not be considered for the purposes of interpreting the scope of Section 16 as this is a principle used in infringement and more so because, the language of Section 16 is clear and requires the plurality of inventions to be gathered from the disclosure and not the claims.
Pursuant to the decision of the DB, the Patent office has refused the divisional application 2853/KOLNP/2015, holding that the primary condition for filing a divisional application is that the Parent Application must include “plurality of distinct invention”; and as the subject matter of the Divisional Application 2853/KOLNP/2015is nothing but a preferred embodiment of the subject matter as claimed in the Parent Application 1755/KOLNP/2010 it does not meet the criteria of a “distinct Invention”. This despite the argument of applicant of 2853/KOLNP/2015 that the invention of the parent and divisional applications were distinct inventions, covering different inventive concepts.
Though the interpretation of Section 16 has seen some light, some further clarity on “distinct inventions” may be required in the future from the Courts.
For further information, please contact:
Swati Sharma, Partner, Cyril Amarchand Mangaldas
swati.sharma@cyrilshroff.com
[1] 16. Power of Controller to make orders respecting division of application.-
(1) A person who has made an application for a patent under this Act may, at any time 67 [before the grant of the patent], if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.
(3) The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other. 68 [Explanation-For the purposes of this Act, the further application and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.]
[2] [C.A.(COMM.IPD-PAT) 471/2022]
[3] Syngenta’s divisional application is numbered as 7059/DELNP/2011 and its claim 1 that was refused by the Controller of Patents included one of the three combinations disclosed in the complete specifications of the parent application (6114/DELNP/2005), but not specifically claimed.
[4] “(1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any.
(2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.”
