The Delhi High Court overruled the Boehringer Ingelheim judgement and held that a Divisional Application moved in terms of Section 16 of the Patents Act 1970 (the Act) would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed.
Whether the plurality of invention is liable to be found in the parent claims or would it also extend to being discerned from the provisional or complete specification that may have accompanied the application for grant of a patent.
The Appellant, Syngenta, is a corporation organized under the laws of the United Kingdom and is stated to be involved in research and development in varied fields such as chemicals, agriculture, and healthcare related products, and engaged in the manufacturing and distribution of those products worldwide.
On 28 December 2005, it made an application to the Controller of Patents in respect of its invention pertaining to an agrochemical concentrate comprising an adjuvant and a hydrotrope containing 14 claims.
A request for examination of the Divisional Application was filed in terms of Section 11B of the Act read along with the Rule 24 B of the Patents Rules, 2003. The original application was granted after examination on 01 May 2012 as IN252191. The Divisional Application thereafter came to be published on 08 February 2013 in the Patents Journal. The said application was examined by the Controller and a First Examination Report was issued on 27 December 2015.
Responding to the FER, the Appellant submitted its response. After affording an opportunity of hearing to the Appellant, the Controller by an order of 11 October 2017, proceeded to refuse the Divisional Application.
As would be evident from a reading of the conclusions as recorded by the Controller, it is apparent that it has proceeded on the premise that for a Divisional Application to be maintainable, the disclosure of more than one invention must necessarily be embodied in the parent application. The Controller took the view that since the parent application did not contain any claims relating to plurality of a distinct invention, the Divisional Application was liable to be refused. The Controller has additionally taken into consideration the fact that the Appellant had while responding to the exam report, raised no objection relating to plurality of inventions.
The Court was unable to concur with the view as expressed in Boehringer Ingelheim and the said judgment shall consequently stand overruled. It was held that a Divisional Application moved 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. Further, the Court was of the opinion that Section 16 does not suggest or conceive of a distinction between the contingency of a Divisional Application when moved by the applicant of its own motion or where it comes to be made to remedy an objection raised by the Controller. In either of those situations, the plurality of inventions would have to be tested based on the disclosures made in either the provisional or complete specification.
This judgement is being praised as a major advancement in removing doubts regarding divisional application submission in the Indian patent system. The Court established a precedent for future disputes at the Indian Patent Office and in the Courts by making a clear distinction between the "claims" and the "specification" (whether complete or provisional). The Court has expanded the scope for applicants to file divisional applications by highlighting that the plurality of inventions can be derived from the disclosures in the specification and not just the claims. This gives applicants, particularly foreign applicants, the much-needed flexibility they have become accustomed to in the IP5 countries.
It is anticipated that this decision would also establish consistency in the assessment standards for divisional applications submitted willingly and those filed in response to an Indian Patent Office objection regarding unity of invention.