In BASF SE v. Controller of Patents and Designs ((T)CMA(PT) No.38 of 2024), the Madras High Court quashed the order passed by the Controller of Patents and Designs refusing to grant the patent application in respect of a Divisional Application on the ground that the said divisional application was filed after the grant of patent in respect of the original patent application filed by the appellant.

Background:

The Appeal was instituted by the Appellant challenging the order of the Respondent, wherein the Appellant’s divisional application was refused on the ground that the said Divisional Application was filed after the parent patent grant and lack of plurality of invention.

According to Section 16 of Indian Patents Act, 1970 (as amended): “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 one or more further application under section 16 in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.” (Emphasis added)

Appellant’s submissions:

The Appellant argued that the parent application was granted on the very same day that the appellant filed the divisional application. The appellant also submitted that it will be impossible for the appellant to know the exact timing when the patent was granted in favour of the appellant. They also brought to the notice of the Court that the order passed in violation of the principles of natural justice, as there was no reference to the above in the hearing notice in relation to the divisional application.

Respondent’s submissions:

The Respondent submitted that the timing of the grant of patent of parent application was earlier than the filing of the Divisional Application by the appellant.

Court’s analysis and decision:

The Court held that:

• The impugned order was passed by total non-application of mind, as the Divisional Application was filed on the same day when the parent patent was granted, and it was impossible for the appellant to know the exact timing when the patent was granted;

• the impugned order was passed in violation of the principles of natural justice, and for the failure of the Respondent to notify the Appellant in advance in relation to the purported lack of plurality of the invention/application.

Hence, the Court quashed the impugned order and remanded the matter back to the Controller General of Patents, for fresh consideration by a different Controller.