The maintainability of a divisional application in India has always been a subject of interpretation. Recently, a two-judge (Division) Bench of the Delhi High Court, provided clarity on this matter in the case of Syngenta Limited versus Controller of Patents and Designs, delivering a binding and pivotal precedent.
Section 16 of the Patent Act, 1970, deals with the subject of divisional applications. Under the section, a divisional application may be filed by the applicant voluntarily or to remedy an objection raised by the Controller of Patents and Designs that the claims of an application relate to more than one invention.
The crux of the issue that the Division Bench decided in its judgement, is whether the claims of the divisional application ought to be derived from the claims of the parent application whose claims relate to multiple distinct inventions or can they also be derived from the related specification.
In December 2005, Syngenta Limited (Syngenta), a leading agriculture company, made an application to the Controller in respect of its invention relating to an agrochemical concentrate. There were 14 claims in this application. In September 2011, Syngenta filed a divisional application. Thereafter, the parent application was granted a patent in May 2012.
Subsequently, in February 2013, the divisional application was published and an examination report was issued which followed up with a hearing. The Controller, basing the decision on the interpretation that the plurality of inventions must be present in the claims of the parent application, refused the divisional application in October 2017.
Aggrieved by the refusal order, Syngenta filed an appeal at the Delhi High Court. However, by the time, Syngenta’s appeal could come up for hearing, the Delhi High Court had already decided on the issue in question in Boehringer Ingelheim International GMBH v. The Controller of Patents (Boehringer case).
In the Boehringer case, the Court had decided that the invention claimed in the divisional application should be derived from the claims of the parent application which relate to plurality of distinct inventions. The position had earlier been examined and held so by the erstwhile IPAB in a previous case, ESCO Corporation v Controller of Patents & where the IPAB had decided that a patent application can only be divided, if it claims more than “one invention“.
In the Boehringer case, the Court had relied on the doctrine of patent law i.e., ‘what is not claimed is disclaimed’ and emphasized that since the claims of the divisional application were not part of the claims of the parent application, the applicant had lost the right to claim them. The Court had also ignored the phrase “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” in Section 16(1). The Division Bench did not accept the interpretation accorded to Section 16 in the Boehringer case and did not subscribe to the view adopted by the Single Judge in the earlier judgement in the Syngenta case.
On the question of the doctrine of patent law i.e., ‘what is not claimed is disclaimed’, the Division Bench said that this doctrine may be relevant for infringement analysis but, it had no application to the subject of divisional filing and claim drafting. The Court referred to the opinion given by Lord Russel in Electric and Musical Industries Ltd. Et al vs. Lissen Ltd. et al.
Overruling the judgement given in the Boehringer case, the Court held that a divisional application in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed. The Court said that irrespective of the divisional application being filed suo moto or on the instance of an objection raised by the Controller, the plurality of inventions would have to be tested based upon the disclosures made in either the provisional or complete specification.
The landmark judgment by the Division Bench of the Delhi High Court in the Syngenta case has provided a pivotal precedent on the maintainability of divisional patent applications. By overruling the decision of the single judge of the same Court in the Boehringer case, the importance of the entire patent specification, not just the claims, in determining the presence of multiple inventions, is clarified. This clarity will likely influence future patent applications and litigations, ensuring a more consistent and transparent approach to divisional patent filings.