In a decision with a far-reaching effect, the Division Bench of the Delhi High Court (“Court”) in
Syngenta Ltd. vs. Controller of Patents & Designs 2023:DHC:7473-Court has clarified that for maintaining a divisional application, a plurality of inventions in the parent application is a requirement for divisional application. The Court has also held that these inventions may be disclosed either in the provisional or the complete specifications of the parent application and not just claims of the parent application.
Brief facts are that Syngenta filed a parent application in 2005 for an agrochemical concentrate. Subsequently in 2011 Syngenta filed a divisional application under Section 16 of the Indian Patents Act, 1970 (“the Act”). The divisional application was examined by the Controller of Patents. Syngenta duly filed the response to the examination report. An oral hearing was appointed. The Controller refused the divisional application on the ground that (a) no objection on plurality has been raised by the Controller; (b) that Syngenta has changed the nature of the claimed invention that do not form part of parent application of divisional application; (c) the parent application did not contain any claims relating to plurality of distinct inventions. Syngenta filed an appeal against this refusal order before the High Court of Delhi (“DHC”).
The Single Judge, DHC observed that the refusal order essentially alludes to the position as laid down in Boehringer Ingelheim International GMBH vs. Controller of Patents 2022SCCOnlineDel3777 of the Co-ordinate Bench of Delhi High Court. The Single Judge doubted the correctness of the views in Boehringer and referred the matter to a Court to consider the following two questions:
(i) When the divisional application is filed by the applicant suo moto (not on the basis of
objection raised by the Controller), then would the requirement of plurality of inventions being
contained in the parent application apply?
(ii) Does the plurality of inventions have to be reflected 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? Succinctly, Boehringer has held that to file a divisional application, the support for the claims must be
found in the claims of the original/parent application. In other words, Boehringer had held that a divisional application is liable to be refused if there was no support in the claims of the parent application despite the claims of the divisional application may have found support in the provisional or complete specifications.
The Court has overruled the findings in Boehringer holding:
(i) The Court has held that Section 16(1) of the Act in unambiguous terms enables the filing of
further application in respect of an invention with only the proviso that the claims of the further
applications are disclosed in the provisional or complete specifications already filed. Court
also held that the significance of the expression “disclosed in the provisional or complete
specifications” can neither be ignored or discarded. The Court further held that the intention of the legislature is clear from Section 16 (1) wherein in unequivocal terms, the legislature has
provisioned that the claims for the divisional application are to be discernible from the
provisional or complete specifications.
(ii) The Manual of the Patent Office Practice & Procedure also laid down that claims may not necessarily be included in a provisional application. This further indicates the legislature intent that a divisional application can be based on the disclosure in the provisional application. If this were not so, then the legislature would not have categorically stated in Section 16 (1) that to file a divisional application in respect of an invention “disclosed in the provisional or complete specifications”. Alternatively, if in the cases where the provisional application has no claims, divisional application can never be filed. Thus, the Single Judge was correct that Boehringer resulted in rewriting of Section 16(1) by erasing “disclosed in the provisional or complete specifications”.
(iii) The Court also took cognizance that Article 4G of Paris Convention allows an applicant to
either suo moto or on an objection by the Controller file a divisional application. Article 4G
leaves it open to signatory States to determine and prescribe the conditions subject to which
such applications may be considered. Thus, the legislative intent is also clear that support
from provisional or complete specifications can be taken and not just from the claims of
parent application.
(iv) Importantly, the Court has held that a divisional application can have claims that have scope
broader than that of the parent application. Simply, a divisional application need not be a
narrower version of the parent application.
(v) The Court has also held that there does not appear to be any justification to impute the
principle of “what is claimed is not disclaimed” of Section 16(1) of the Act for the purpose of
discerning the scope of Section 16. This principle is relevant for the purposes of infringement
analysis but not for the purpose of divisional application.
The Court decision has given much needed clarity and direction in terms of scope of divisional applications. This clarification of law will help applicants in multiple manners for instance, the applicants are no longer restricted to the original claims of the parent application and can now refer to the disclosure in the provisional or complete specifications. The only proscription is that to claim plurality of inventions, they must not contain either a single invention or a group of inventions linked to form a single inventive concept. Another benefit is that in the event during the prosecution if the Patent Office objects to a broad claim, the applicant may not agree with the Controller. Nevertheless, the applicant may agree to narrow the claims to initiate infringement actions while at the same time, seek more time to convince the controller on the broader scope. All in all, it’s a positive development
from the perspective of the patent applicants.
Vaibhav Vutts
Also published in APAA e-Newsletter (Issue No. 39, February 2024)