Case- Syngenta Limited Vs Controller Of Patents And Designs On 26 July, 2023, C.A.(Comm.Ipd-Pat) 471/2022

Background of The Case

On December 28, 2005, Syngenta Limited (Appellant) filed a patent application[1] titled “Agrochemical concentrate comprising an adjuvant and hydrotrope.” Similarly, on September 15, 2011, Syngenta Limited filed a divisional application,[2] which included a specific combination of the three preferred combinations disclosed in the complete specifications of the main application as the combination of adjuvant-hydrotrope.

The Indian Patent Office (IPO) issued a First Examination Report (FER) on December 27, 2015, and after a hearing, the Controller passed an impugned order which rejected the grant of the divisional application on the ground that the Appellant failed to disclose more than one distinct invention in the parent application as per the requirement of section 16 of the Patents Act, 1970. Hence this appeal.

Issue raised

Whether the divisional application under Section 16 of the Act required the parent application to disclose more than one invention to be eligible for the divisional application?

Analysis

The Court observed that Section 16(1) of the Act allows for the filing of a Divisional Application under two conditions- first, when the applicant of the parent application files it suo moto, and second, when the applicant files it to address an objection raised by the Controller. This objection is raised when the claims of the complete specification are considered to pertain to more than one invention.

The Court pointed out in a case Indore Development Authority v. Manoharlal,[3] that the presence of a comma after ‘if he so desires’ in Section 16(1) indicated that the applicant could file a Divisional Application on their own without the requirement of plurality of inventions. However, the absence of a comma after ‘raised by Controller’ suggested that the requirement of plurality of inventions applied when the Controller raises an objection.

The Court agreed with the appellant’s argument that the requirement of a plurality of inventions in the original application would only be applicable when filing a Divisional Application to address an objection raised by the Controller. The Court did not rely on the interpretation given in the case of Boehringer Ingelheim International GMBH v. The Controller of Patents,[4] the Court opined that decision of the legislature’s decision not to include a comma after “raised by the Controller” in Section 16(1) of the Act seemed to be aimed at aligning the provision with Article 4(G) of the Paris Convention.

The Court observed that Section 16(1) of the Act used two distinct expressions, “relate to” and “disclosed in,” and their significance could not be ignored. While the claims in the parent application must relate to a plurality of inventions, it would be sufficient if the Divisional Application was filed in respect of an invention disclosed in the provisional or complete specifications.

The Court’s opinion was that the claim in the parent application related to a plurality of inventions, as it covers all cases where the single continuous phase comprised an oil-based adjuvant and a hydrotrope. This broad coverage allowed for numerous adjuvant-hydrotrope combinations to be included within the claim. The complete specifications accompanying the claim disclosed three specific combinations of adjuvant-hydrotrope. The appellant’s divisional application was filed with respect to one of these disclosed adjuvant-hydrotrope combinations.

The Court opined that the rejection of the application on the ground that the plurality of inventions was not explicitly stated in the claim itself but only in the disclosure contained in the complete specifications would be incorrect. The Court further stated that although the Boehringer Ingelheim Case might have supported such an interpretation, it would be plainly contrary to the words used in Section 16(1) of the Act and, therefore, could not be prima facie sustained.

Therefore, the Court referred two questions for consideration to a Division Bench of the Delhi High Court:

• Does the requirement of a plurality of inventions in the parent application for a Divisional Application to be maintainable may still apply even when the Divisional Application is filed by the applicant voluntarily (suo moto) and is not based on any objection raised by the Controller.
• Assuming that the requirement of a plurality of inventions in the parent application was necessary for a Divisional Application to be maintainable, did the plurality of inventions have to be reflected in the claims in the parent application, or was it sufficient if the plurality of inventions was reflected in the disclosures in the complete specifications accompanying the claims in the parent application?

Conclusion

The Court directed the Registry to present the matter before the Chief Justice to constitute an appropriate Division Bench to examine the aforementioned issues. The Division Bench order is awaited and expected to be a crucial ruling to clarify the law relating to divisional application claims in India.

[1] (6114/DELNP/2005)

[2] (7059/DELNP/2011)

[3]Indore Development Authority v. Manoharlal SLP (C) 9036-9038/2016.

[4] Boehringer Ingelheim International GmbH v. Barr Laboratories, Inc., 592 F.3d 1340 (Fed. Cir. 2010).