Delhi High Court  clears up legislative ambiguity on divisional applications

In Syngenta Limited v Controller of Patents, the Delhi High Court division bench has addressed the issue of ambiguity associated with the maintainability of divisional applications under Section 16(1) of the Indian Patents Act (2023 DHC 7473 DB).

Case details

The case came was referred by a single-judge bench of the Delhi High Court, which was hearing Syngenta’s challenge to the Indian Patent Office (IPO)’s refusal of one of its divisional applications. In brief, Syngenta had filed a divisional application suo motu, which was rejected by the IPO primarily on the ground that its claims were not part of those recited in the parent application. The IPO’s interpretation found support in Boehringer Ingelheim International Gmbh v The Controller of Patents, in which it was held that if plurality of inventions is absent in the parent application’s claims, a divisional application cannot be filed solely on the basis of disclosures in the complete specification (2022 DHC 002682). The single judge disagreed with the Boehringer Ingelheim ruling, but instead of passing a contrary order, chose to refer the question to a larger bench.

Section 16 of the Patents Act

The provision at issue was Section 16(1) of the Patents Act, which states that:

A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, 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 (emphasis added).

Section 16 allows an applicant to:

• file a divisional application of their own volition (category one); or 
• with a view to overcome an objection of plurality of inventions in the parent application (category two).

According to the single judge – bearing in mind the provision’s legislative intent – the presence of a comma in Section 16(1) after “if he so desires” means that, for applications filed suo motu, the requirement that “claims of the complete specification relate to more than one invention” appearing later in Section 16(1) is not applicable. To arrive at this interpretation, support was taken from Article 4(G)(2) of the Paris Convention, which allows applicants to file divisional applications of their own volition. 

With regard to the requirement that parent applications must disclose a plurality of inventions, the court held that even if it is assumed that this requirement applies to both categories of Section 16(1), then it would suffice that such plurality be present in the complete specification. 

The bench’s ruling

In this context, the division bench addressed two questions.

• In the case of divisional applications filed suo motu, is the presence of plurality of distinct inventions in the parent application an essential requirement?
• Must plurality of inventions in a parent application be necessarily present in the its claims, or would disclosure of plurality in the application’s complete specification suffice?

Answering the first question, the bench disagreed with the single judge’s view and ruled that, irrespective of whether a divisional application is filed suo motu or with a view to overcome an IPO objection, the parent application must disclose plurality of distinct inventions.

With regard to the second question, the bench held that the restrictive requirement of the presence of plurality of inventions in the parent claims was an incorrect interpretation of Section 16(1). The provision does not state that a divisional application can only be filed on the basis of the parent application’s claims. The court also reasoned that if Boehringer’s view is considered correct then it would lead to a strange situation where a divisional application cannot be filed from a provisional application that is filed without claims. 

Further, the Boehringer rule of what is not claimed is disclaimed had no application in any analysis linked to the presence of plurality of inventions. Therefore, using such a paradigm in deciding a divisional application’s validity would be incorrect. 

Clarity for future divisional applications

Ultimately, the bench set aside the Boehringer judgment and ruled that if disclosures accompanying the parent application’s complete specification disclose plurality, a divisional application can be filed on the basis of such disclosures. The bench remanded the matter back to the single judge to decide Syngenta’s appeal against the refusal of its divisional application. The latter has, in fact, given its decision in favour of Syngenta. However, the published opinion of the single judge is yet to be released. 

The division bench’s opinion gives full effect to the language of Section 16(1) and will bring much-needed clarity to the examination and prosecution of divisional applications at the IPO.