By Swaraj Raghuwanshi and Aastha Suri
In a recent case of Syngenta Limited vs Controller Of Patents And Designs[1] , an Appeal was filed before the Hon’ble Delhi High Court under Section 117(A) of the Patents Act, 1970 by Syngenta Limited against the impugned order passed by the Deputy Controller of Patents and Designs (“Deputy Controller”, hereinafter) vide order dated October 11, 2017, wherein the Deputy Controller had rejected the grant of divisional application filed by the Appellant.
The divisional application in the case was filed by the Appellant under Section 16(1) of the Indian Patents Act, 1970 in respect of the parent application number 6114/DELNP/2005 dated December 28, 2005 titled “Agrochemical concentrate comprising an adjuvant and hydrotrope”.
A brief overview of the matter
Syngenta Limited (Appellant) had filed a patent application (6114/DELNP/2005) on December 28, 2005 titled “Agrochemical concentrate comprising an adjuvant and hydrotrope”. The claim 1 of the patent application comprised an oil based adjuvant and a hydrotrope capable of solubilizing the adjuvant in the continuous phase. Three preferred combinations of hydrotrope and oil-based adjuvants were disclosed in the complete specification of the claimed invention.
Subsequently, the Appellant filed a divisional application (7059/DELNP/2011) on September 15, 2011, wherein claim 1 comprised a specified combination of the three preferred combinations contained in the complete specifications of the parent application as the adjuvant-hydrotrope combination. Thereafter, First Examination Report (FER) was issued by the Indian Patent Office (IPO) on December 27, 2015 to which the Appellant filed a response on March 14, 2016. The Appellant was granted a hearing on February 8, 2017. On October 11, 2017, the impugned order was passed by the Controller, rejecting the grant of the divisional application.
Rejection of Patent Divisional application
The Controller, in the order passed by him, rejected the grant of the divisional application on the ground that the divisional application did not meet the requirement of Section 16 of the Patents Act, as it failed to disclose more than one distinct invention in the parent application.
The Deputy Controller stated that for an application to be considered as a divisional application under Section 16, it is essential that the parent application included multiple inventions, and not just the same invention. The Deputy Controller stated that the parent application, in this case, did not contain any claims relating to multiple inventions, and no such objection regarding the same was raised in the FER. The divisional application was filed without complying with the requirements contained in the FER. As a result, the grant of the divisional application was refused by the Controller.
Appeal filed by the Appellant
The Appellant in the case raised two major points while challenging the Deputy Controller’s reasoning:
1. That the requirement of the claims of the complete specification in the parent application to relate to more than one invention applies to only when filing a divisional application after objections raised by the Controller, not when the Applicant filed it suo moto (on their own initiative).
2. That the Deputy Controller’s observation that the parent application lacked claims relating to plurality of inventions was erroneous, as the requirement of plurality of inventions also extended to situations where multiple inventions are disclosed in the complete specification of the parent application.
CGPDTM’s response in the matter:
The Office of the Controller General of Patents relied on the judgment of a Coordinate Bench of the Court in Boehringer Ingelheim International GMBH v. The Controller of Patents[2] to support the argument that a divisional application can only be filed when the parent application contains claims related to a “plurality of inventions” as defined in the claims themselves.
The Appellant argued that the findings in the Boehringer Ingelheim case may need reconsideration, as they were explicitly contrary to the statutory provision. The Appellant further referred to Article 4(G) of the Paris Convention for the Protection of Industrial Property, which provides that the applicant can submit the divisional application either when the examination reveals that the parent application contains more than one invention or on the applicant’s own initiative. Appellant further contended that Article 4(G)(2) does not mention the requirement of the parent application containing multiple inventions for suo moto filing of the divisional application and also asserted that Section 16(1) of the Patents Act aligned with Article 4(G) of the Paris Convention in this regard.
Judgement passed by The Delhi High Court
The Hon’ble Court expressed disagreement with the view expressed in the Boehringer Ingelheim case, which suggests that the requirement of the parent application containing a plurality of inventions applies to both suo moto filing and filing in response to objections raised by the Controller.
The Hon’ble Court also emphasized the significance of punctuation (comma) in statutory interpretation and stated that “comma” should have been added after the words “raised by the Controller” in Sub-Section 1 of Section 16 and words “provisional or complete specification” in Sub-Section 1 of Section 16 should have been replaced with the word “claims”.
The Hon’ble Court was of the view that in such a case, it might have been possible to hold that the requirement of the claims of the complete specification relating to a plurality of invention, was applicable both to cases where the divisional application was filed suo moto as well as where the divisional application was filed on an objection raised by the Controller.
The Hon’ble Court in view of the statutory provisions concluded that the absence of comma in Section 16(1) supported the view that the requirement of a plurality of inventions is only applicable when the divisional application is filed to remedy objection raised by the Controller.
Furthermore, the Hon’ble Court noted that the second objection raised by the Appellant appeared to align with the statutory intent. The Hon’ble Court analyzed the language used in Section 16(1) and found merit in Appellant’s submission..
The Hon’ble Court also referred to the Manual of the Patent Office Practice and Procedure and Form-2 of the Patent Rules to support the argument that provisional specifications do not need to include claims.
Consequently, the Hon’ble Court proposed referring the following questions to a Division Bench for consideration:
1. Does the requirement of a plurality of inventions being contained in the parent application apply even when the Divisional Application is filed suo moto by the applicant, without any objection raised by the Controller?
2. Assuming that the requirement of a plurality of inventions in the present invention is necessary for a Divisional Application to be maintainable, does the plurality of inventions have to be reflected in the claims in the parent application, or is it sufficient if they are reflected in the disclosures in the complete specifications accompanying the claims in the parent application?[3].
Conclusion
In the instant case, the impugned refusal order passed by the Controller may be seen as a strict interpretation of Section 16 of the Patents Act, 1970, to ensure that the divisional application is allowed only in cases where multiple inventions are disclosed in the parent application. The decision of the Hon’ble Division Bench in the case and observations made with respect to the aforesaid questions are most awaited as they are crucial and will clarify the law relating to divisional application claims in India.
[1] C.A.(COMM.IPD-PAT) 471/2022
[2] C.A. (COMM.IPD-PAT) 295/2022
[3] https://indiankanoon.org/doc/70989541/?type=print
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