The Delhi High Court overturned the Boehringer Ingelheim case ruling in the current landmark case of Syngenta Ltd v. Controller of Patents and Designs, bringing much-needed clarity to the requirements for filing divisional applications and offering a precise response to the questions regarding the content of the divisional application and the circumstances in which it may be filed.
Background
Syngenta (the Appellant) is a company registered under the laws of the United Kingdom. Its activities include research and development in a number of areas, including chemicals, agriculture, and healthcare-related products, as well as the production and international distribution of those products.
On December 28, 2005, the appellant submitted a 15-claim patent application (having No. 6114/DELNP/2005) to the Controller of Patents (the Defendant), regarding its invention of an agrochemical concentrate with an adjuvant and a hydrotrope. On September 15, 2011, in accordance with Rule 24 B of the Patents Rules, 2003 and Section 11B of the Act, a request for inspection of the Divisional Application was submitted. One of the three preferred combinations that were present in the parent application's complete specifications but not claimed in the parent application's claims was included in the divisional application filed by the appellant Syngenta. After review, the initial/parent application (IN252191) was approved on May 1, 2012. Following that, the Divisional Application no. 7059/DELNP/2011 was published on February 8, 2013. The Controller examined the divisional application, and on December 27, 2015, a First Examination Report was published. In response, the Appellant filed their answer to the FER. After allowing an opportunity of hearing to the Appellant, the Controller by an order dated October 11, 2017, denied the Divisional Application.
Issue
The main issue in this case was regarding the interpretation of Section 16(1) of the Patents Act which talks about the power of the Controller to make orders regarding the division of patent applications, specifically focusing on scenarios where a divisional application is filed to address objections raised by the Controller. Following are issues which were issued:
- Is the Divisional Application Request applicable even if it was submitted voluntarily by the applicant and not in response to the Controller's objection regarding multiple inventions?
- Does the plurality of invention is liable to be present in the parent claims or would it also to being determined from the provisional or complete specification of the patent application?
Analysis
The Court pointed out that Section 16(1) of the Act permits the submission of a Divisional Application under two circumstances: first, when the applicant of the parent application submits it on their own initiative, and second, when the applicant submits it in response to a Controller objection. When it is believed that the claims of the whole specification apply to more than one invention, this objection is brought up.
The existence of a comma following "if he so desires" in Section 16(1) suggested that the applicant could submit a Divisional Application on their own without the necessity of plurality of innovations, the court noted in the case Indore Development Authority v. Manoharlal. The requirement of a plurality of innovations, however, appeared to apply when the Controller raised an objection because there was no comma after the phrase "raised by Controller."
The appellant's claim that the need for multiple innovations in the initial application would only apply when filing a divisional application to respond to a Controller objection was accepted by the court. The court did not rely on the interpretation given in Boehringer Ingelheim International GMBH v. The Controller of Patents. The Court stated that the legislature's decision to omit a comma from Section 16(1) of the Act's language following "raised by the Controller" appeared to be made in an effort to match the clause with Article 4(G) of the Paris Convention.
The Court noted that "relate to" and "disclosed in," two separate terms employed in Section 16(1) of the Act, could not be overlooked for their importance. It would be adequate if the Divisional Application was submitted in relation to one invention disclosed in the provisional or complete specifications, even though the claims in the parent application must relate to a number of innovations.
The claim in the parent application, in the Court's opinion, corresponded to a number of inventions because it covered all circumstances in which the same continuous phase included both an oil-based adjuvant and a hydrotrope. Numerous adjuvant-hydrotrope combinations could be included in the claim due to the extensive scope. Three distinct adjuvant-hydrotrope combinations were revealed in the detailed specifications that accompanied the claim. One of these exposed adjuvant-hydrotrope combinations was the subject of the appellant's divisional application.
Consequently, the Court referred the following two questions before a division bench at the Hon'ble High Court:
- Does the requirement of a plurality of inventions in the parent application for a Divisional Application to be maintainable may still apply even when the Divisional Application is filed by the applicant voluntarily (suo moto) and is not based on any objection raised by the Controller.
- Assuming that the requirement of a plurality of inventions in the parent application was necessary for a Divisional Application to be maintainable, did the plurality of inventions have to be reflected in the claims in the parent application, or was it sufficient if the plurality of inventions was reflected in the disclosures in the complete specifications accompanying the claims in the parent application?
Division Bench's Ruling
At the time of referral, the Single Judge noted that the Boehringer case cannot be legally justified as it essentially reconstructs Section 16 of the Act by replacing the phrase "disclosed in the provisional or complete specification already filed" with the word "claims." The single judge further noted that the requirement that multiple inventions be included in the original claim would be a restrictive condition that would only be applicable in cases where the divisional application is filed in response to a Controller objection, not in cases where the applicant files a division application on their own.
First, the Division Bench rejected the Single Judge's observation in the Syngenta case that the two categories should be treated differently. It held that the filing of a divisional application, whether done so suo moto by the applicant or in response to a Controller objection, must be evaluated on the same basis. Second, the Division Bench decided that there doesn't seem to be any need to limit the divisional application filing process to instances in which the claims contain a plurality of inventions. The terms "disclosed in the provisional or complete specification" in Section 16 of the Act expressly contradict such an interpretation.
The Bench reasoned that since no claims are required in the context of a provisional filing, accepting Boehringer's logic would essentially mean holding that no divisional application may be filed in the event that a provisional specification is submitted. The Bench further found that the idea of "what is not claimed is disclaimed" is more applicable in an infringement analysis than it is in the formulation of claims.
Conclusion
The Delhi High Court judgement in Syngenta vs. Controller of Patents case is being considered a major step in clarifying the uncertainties regarding the filing of divisional applications by following ways as given below:
- The Hon'ble Court's clarifies doubt about from where one can refer disclosure of plurality of invention i.e., plurality of inventions can be derived from the disclosures in the specification and not just the claims, which sets a landmark for future cases.
- Also, the Court introduces uniformity between the evaluation criteria for the divisional applications filed voluntarily, and the divisional applications filed to overcome an objection of unity of invention.
In view of above, we can conclude that the court has widened the scope for applicants to file divisional applications by adopting a practical approach to the interpretation of the Indian Patents Act.
In the present case, the Controller's refusal order signifies a very strict interpretation of section 16 of the Patents Act. Finally, the Delhi High Court's Division Bench has delivered a resounding judgment, clarifying the requirements for maintaining a divisional patent application. The Bench overturned the Boehringer ruling and held that a divisional application may be maintained under either of the two circumstances—suo moto divisional filing or in response to a Controller objection citing multiple inventions—as long as the multiple inventions are supported by disclosures made in either the provisional or the complete specification.
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