By - King Stubb & Kasiva on November 6, 2023
Divisional patent applications are a critical component of patent strategy in India, enabling patent applicants to protect distinct aspects of their invention initially disclosed in the primary (parent) patent application. These application(s), as the name indicates, are those patent applications that have been separated from a parent application. These applications are governed by the provisions of Sections 16, 10(5) and 7(1) of the Patents Act 1970. The landscape governing divisional applications underwent a significant transformation following the 2012 Intellectual Property Appellate Board (IPAB) ruling in the LG Electronics case, which examined the criteria for their maintainability.
This article explores the evolution of divisional patent applications in Indian patent law and the recent developments that have shaped the standards for their validity.
The LG Electronics case in 2012 laid the foundation for the criteria governing divisional applications in India. It established three key conditions for the maintainability of a divisional application:
This pivotal case introduced the fundamental criteria for initiating voluntary divisional applications, stressing that the claims of the voluntary divisional application must relate to a "distinct invention."
In 2020, the IPAB, in the case of Esco Corporation v The Controller of Patents & Designs, introduced an additional criterion for determining the maintainability of a divisional application. This criterion mandated that the claims of the divisional application, whether filed voluntarily or mandatorily, must be deducible from the claims of the parent application. This underscored the legal principle that "what is not claimed is disclaimed." Subsequently, the High Court of Delhi, in its judgment in Boehringer Ingelheim International GMBH v Controller of Patents and Another (2022), supported the IPAB's findings in the Esco case.
Understanding these criteria requires a close examination of Section 16 of the Indian Patents Act, 1970, which governs the submission of voluntary and mandatory divisional applications. This section outlines two scenarios for filing divisional applications:
The language used in Section 16 suggests that the filing of a divisional application, whether voluntary or mandatory, is based on the disclosure contained in the provisional application or complete specification. If the intention of the legislature were for the claims of the divisional application to depend on the claims (in addition to disclosure) in the parent application, the language of the section might have been different. However, Section 16 does not distinguish between divisional applications based on the disclosure in provisional applications and those based on the claims in a complete specification.
Mandatory divisional applications in India usually stem from objections raised by the Indian Patent Office regarding a plurality of distinct inventions during the examination of a patent application. This interpretation aligns with international agreements such as the Agreement on Trade-Related Aspects of Intellectual Property Rights and Article 4(G) of the Paris Convention for the Protection of Industrial Property, which envision divisional applications when the original application encompasses more than one invention.
Recent developments in the interpretation of divisional patent applications in India have provided further clarity. In a significant departure from previous decisions, a co-ordinate bench of the High Court of Delhi, in Syngenta Limited v Controller of Patents and Designs, emphasized the importance of expressions such as "relate to" and "disclosed in" in Section 16(1).
The court clarified that when objections are raised regarding the claims of the complete specification in the parent application encompassing more than one invention, the applicant retains the right to file additional applications concerning an invention disclosed in the provisional or complete specifications. This ruling makes it clear that Section 16(1) does not require a plurality of inventions to be present in the claims of the parent application. It allows divisional applications based on the disclosure in the patent specification.
The court also noted a significant detail in the text of Section 16(1) – the absence of a comma following the term "controller." This absence has important implications as it delineates two scenarios under which a divisional application can be filed. The court held that Section 16(1) envisions the submission of a divisional application based on the disclosure within the complete specification without requiring an artificial distinction between filing a divisional application solely based on the claims of the parent application.
Divisional patent applications in India have undergone a significant evolution, primarily driven by judicial interpretations of the existing legislation. The criteria for maintainability have evolved over time, with a recent focus on the relationship between the claims of divisional applications and those of the parent application. It is crucial for patent applicants in India to have a clear understanding of these criteria to effectively navigate the patent application process and protect their inventions.
This comprehensive overview of divisional patent applications in Indian patent law sheds light on their historical development, the LG Electronics case's impact, subsequent rulings like the Esco Corporation case, and the recent Syngenta case that has provided further clarification. Understanding the nuances of divisional applications is essential for patent applicants and professionals working in the field of intellectual property in India.
. The three key conditions for the maintainability of a divisional patent application in India are:
1. The divisional application must address multiplicity of invention in the parent application.
2. The divisional application must allow for the filing of multiple inventions disclosed in a single application.
3. The divisional application must maintain the priority date of the parent application.
The Esco Corporation case in 2020 introduced an additional criterion for determining the maintainability of a divisional application. This criterion mandated that the claims of the divisional application, whether filed voluntarily or mandatorily, must be deducible from the claims of the parent application. This underscored the legal principle that "what is not claimed is disclaimed.
The Syngenta case in 2023 clarified that Section 16(1) of the Indian Patents Act, 1970, does not require a plurality of inventions to be present in the claims of the parent application. This means that divisional applications can be filed based on the disclosure in the patent specification.
 The Patents Act of 1970 [Act 39 of 1970], Section 16
 The Patents Act of 1970 [Act 39 of 1970], Section 10(5)
 The Patents Act of 1970 [Act 39 of 1970], Section 7(1)
 Order no. No. 111 of 2011 IPAB
 Esco Corporation v The Controller of Patents & Designs OA/66/2020/PT/DEL, decided on 27th October, 2020
 Boehringer Ingelheim International GMBH v Controller of Patents and Another 2022 SCC OnLine Del 3777
 The Patents Act of 1970 [Act 39 of 1970], Section 16
 Syngenta Ltd. v. Controller of Patents and Designs, 2023 SCC OnLine Del 4366, order dated 26-07-2023