A landmark decision was recently issued by the Delhi High Court (DHC) challenging the current interpretation of Sec. 16(1) of the Indian Patents Act provided in Boehringer Ingelheim v. Controller of Patents. In the matter of Syngenta Limited v. Controller of Patents, the Hon’ble DHC, while deciding on an appeal seeking to impugn the order of the IPO rejecting a divisional application (7059/CHENP/2011), was of the view that the Boehringer decision requires revisitation.
Boehringer Ingelheim v. Controller of Patents
This decision drew the inference that assessment of ’plurality of inventions’ shall draw guidance from Section 10(5) of the Indian Patents Act. The provisions of Section 10(5) define that ‘The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept“. Accordingly, it was deemed that “unity of the invention”/ “plurality of inventions” and whether they form a “single inventive concept” has to be gleaned from a reading of the claims. Hence, if the invention was not contained in the claims of the parent application, the divisional application cannot be permitted as it would defeat the fundamental rule of patent law i.e., ‘what is not claim is disclaimed‘.
The Hon’ble Delhi High Court diverged from this line of interpretation in evaluating the validity of divisional application(s) with a varied take the reading of Section 16(1) entailing the revisitation of this order.
Claims of Parent & Divisional Application
Claim 1 of the parent application (6114/DELNP/2005) is as follows:
“1. An agrochemical concentrate having a continuous water-containing single phase characterised in that said continuous phase also comprises an oil-based adjuvant and a hydrotrope capable of solubilising said adjuvant in said continuous phase.”
Claim 1 of the divisional application (7059/CHENP/2011) is as follows:
“1. An agrochemical concentrate having a continuous water-containing phase said continuous phase comprising an oil-based adjuvant and a hydrotrope capable of solubilising said adjuvant in said continuous phase; where the adjuvant is selected from long chain ethoxylate versions of synthetic or fatty acids, alcohols and amines; and the hydrotrope is a phenol type hydrotrope; and the ratio of the adjuvant to the hydrotrope is from 1:10 to 10:1.”
(The bolded words are common in both the parent and divisional applications. The underlined words are unique to the divisional application.)
In other words, the divisional application claimed one of the three preferred adjuvant-hydrotope combinations that were described in the complete specification (but not claimed in the parent application.)
Two Important Questions
Sec. 16(1) is reproduced below for immediate reference:
16. Power of Controller to make orders respecting division of application. –
(1) 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 Hon’ble DHC posed and answered two pertinent questions to determine if the divisional application was maintainable under Sec. 16(1).
1. Is the requirement of the parent application containing a plurality of inventions applicable even where the divisional application is filed suo motu by the applicant, without any objection raised by the Controller?
Responding to this question, the Court observed that “punctuation, in a statute, is often determinative of its construction.” And that “the Court cannot ignore the syntactical structure in which the legislature has crafted the provision.”
The Court, while analyzing the syntax of Sec. 16(1), especially the placement of the comma in the sentence structure, concluded that Sec. 16(1) allows divisional applications under the following two circumstances:
a) May be filed by the applicant of the parent application, if he so desires.
b) Where the applicant seeks to remedy an objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention.
The Court noted that the Sec. 16(1) incorporates a comma after “if he so desires”, but not after “raised by the Controller”. Therefore, the Court opined that the requirement of the claims of the complete specification relating to plurality of invention is only relatable to the objection raised by the Controller. If the divisional application is being filed suo moto (“if he so desires”), the requirement of claims of the parent application relating to a plurality of inventions, prima facie, does not apply. However, if a comma was incorporated after the words, “raised by the Controller”, then 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 Court further observed that such an interpretation of Sec. 16(1) was also consistent with Article 4(G) of the Paris Convention (which was apparently not brought to the attention of the Coordinate Bench in the Boehringer Ingelheim case.) The suo moto filing of divisional application as allowed under Sec. 16(1) without requiring a plurality of inventions is consistent with Article 4(G)(2) of the Paris Convention.
2. Assuming the parent application is required to contain a plurality of inventions, do the plurality of inventions have to be contained in the claims in the parent application or is it sufficient if they are disclosed in the disclosures forming part of the complete specifications in the parent application?
Responding to the second question, the Court astutely recognized the distinction between the terms “relate to” and “disclosed in” in Sec. 16(1). Fittingly, the court opined that:
“While, therefore, the claims in the parent application must relate to a plurality of inventions … it would suffice if the divisional application is filed in respect of an invention (forming part of the plurality) disclosed in the provisional or complete specifications. The provision does not, as it stands, appear to require the plurality of inventions to form part of the claims in the parent application.”
In the present case, the divisional application was filed in respect of one of the three adjuvant-hydrotrope combinations disclosed in the complete specification, and, therefore, “in respect of an invention disclosed in the provisional or complete specifications” as required by Sec. 16(1). The Court further observed that:
“… the application could not have been rejected solely on the ground that the plurality of inventions was not specifically contained in the claim, and only in the disclosure contained in the complete specifications. Though Boehringer Ingelheim supports this view, the interpretation would, in my opinion, be plainly contrary to the words used in Section 16(1) and cannot, therefore, prima facie sustain.”
Divisional based on Invention disclosed in a Provisional Application
As per Serial No. 5 of Form 2 prescribed by the IPO and the Manual for Patent Office Practice and Procedure, claims are not required to be included in a provisional application. The Court found substance with the Appellant’s counsel’s submission that, inasmuch as Section 16(1) permits divisional applications to be filed in respect of inventions disclosed in provisional or complete specifications in the parent application, the specification of plurality of inventions in the claim can never be an imperative. Thus, the Court stated that:
“As such, the invention in respect of which the Divisional Application is filed is required to be disclosed only in the provisional or complete specification filed in respect of the parent application. The view, expressed in Boehringer Ingelheim to the effect that the plurality of inventions must form part of the claims in the parent application, therefore, in my view, requires a revisitation.”
Matter referred to Division Bench
Due to conflicting opinions expressed by the Coordinate Bench in the current matter and in the Boehringer Ingelheim case, the Hon’ble court deemed it appropriate to refer the following questions for consideration by a Division Bench to be constituted by and subject to orders of the Hon’ble Chief Justice:
i. 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?
ii. 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?
This decision of the Hon’ble DHC is a much needed silver lining for applicants who wish to file suo moto divisional applications without having to establish support in the parent claims, or prove presence of a plurality of inventions in the parent claims. The response to the two questions currently referred to the Division Bench will be crucial as it would have retrospective effect on numerous cases and will chart a new path in determining the maintainability of future divisional applications.
Anand Barnabas, Practice Head, Patent (Mechanical & Automotive division)
Divya Shekar, Patent Attorney