In an important development, the Delhi High Court in Syngenta Limited v. The Controller General of Patents, has placed the following issues before the Honourable Chief Justice, for consideration by an appropriate Division Bench of the Court: (a) Does the requirement of a plurality of inventions being contained in the parent application, in order for a Divisional Application to be maintainable, apply even where the Divisional Application is filed by the applicant suo moto, and not on the basis of any objection raised by the Controller; and (b) Assuming that the requirement of a plurality of inventions in the parent application 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 the plurality of inventions is reflected in the disclosures in the complete specifications accompanying the claims in the parent application?
Background: The Appellant/Applicant (Syngenta Limited) had filed a Divisional Application No. 7059/DELNP/2011, with the Indian Patent Office on 15 September 2011.
Facts: The Controller (of the Indian Patent Office) refused the instant application under Section 16 of the Indian Patents Act, 1970 (as amended) (the ‘Act’), on the basis that “If the applicant desires to file a divisional application for his invention, disclosure of more than one invention (plurality of distinct invention) in the parent application is essential. The parent application, which was granted, did not contain any claims relating to plurality of distinct invention.”
Position adopted by The Controller General of Patents (the ‘Defendant’): The Defendant placed reliance on various judgments, especially that of a coordinate Bench of High Court in Boehringer Ingelheim International GMBH v. The Controller of Patents and ESCO Corporation v. Controller of Patents & Designs (‘Boehringer Ingelheim’). They submitted that looking at the settled practices, a patent application can only be divided, if it claims more than ‘one invention’. The divisional application cannot be permitted to be filed solely on the basis of disclosure made in the specification as it would defeat the fundamental rule of patent law i.e., ‘what is not claim is disclaimed’.
Position adopted by the Appellant/Applicant:
- Boehringer Ingelheim may require a re-visitation.
- The Applicant placed reliance on Article 4(G) of the Paris Convention for the Protection of Industrial Property, according to which a divisional application can be filed by an Applicant either in the event of the examination of the parent application by the authority revealing that it contains more than one invention, or on his own initiative. The stipulation of the parent application containing more than one invention does not find any place in Article 4(G), which deals with suo moto filing of divisional applications.
The Court provided its interpretation of Section 16(1) of the Act which reads as follows, “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.”
The Court noted that the section incorporates a comma after “if he so desires”, while there is no such comma after “raised by the Controller”, and agreed with the position adopted by the Appellant.
Be that as it may, the Court stated that it is not sure whether the said position is accurate or not. In light of the circumstances, and fact that the said issues are likely to affect a large number of cases going forward, the Court placed the matter before the Honourable Chief Justice for the constitution of a larger bench of the Court, to decide on the aforementioned issues of law.