A Punctuational Turnaround: Big relief in India’s Divisional patent practice

In an appeal filed by Syngenta Limited against a refusal order of the Indian Patent Office, the Delhi High Court opined on important issues related to suo moto filing of divisional applications.

Importantly, in 2022, the Delhi High Court passed two judgments restricting the rights of Applicants to file suo moto divisional applications wherein the “claims” of the parent application did not disclose a plurality of inventions (even if the complete specification encompassed the inventions). This practice is contrary to the European patent regime wherein the specification of the parent application is considered relevant for support of the claims of the divisional application.

The present decision while rightly considering the impact of the previous decisions on a large number of cases, has offered a much-needed clarification and broader interpretation of Section 16 of the Indian Patents Act, in alignment with the Paris Convention and the Legislative intent.

Issues discussed by the Court:

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?

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?

Applicant’s arguments and the Court’s observations:

Divisional applications are filed in India under Section 16(1) of the Indian Patents Act which reads as follows:

(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.

Thus, Section 16(1) envisages two circumstances in which an applicant could file a divisional application, after having filed a parent application:

i. The applicant does so suo moto, as is contemplated from the words “if he so desires”.

ii. The Controller raises an objection.

The Applicant referred to Article 4(G) of the Paris Convention for Protection of Industrial Property:

“(1) If the examination reveals that an application for a patent contains more than one invention ….

(2) The applicant may also, on his own initiative...”

Accordingly, the Applicant submitted that the stipulation of the parent application containing more than one invention does not find any place in Article 4(G)(2), which deals with suo moto filing of divisional applications.

It was the Applicant’s submissions that it is only where the divisional application is based on an objection raised by the Controller that the requirement arises that the objection has to be on the ground that the claims of the complete specification in the parent application relate to more than one invention.

The Court agreed with the Applicant’s submissions and noted that to support the interpretation that the suo moto filing of a divisional application can only be in a situation wherein the claims of the parent application contain more than one invention, it would be required to add a comma after the words “raised by the Controller” and replace the words “provisional or complete specification” with the word “claims”.

Currently, the relevant portion of the provision (Section 16 of the Act) reads as follows:

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

The Court opined that to support the interpretation of the 2022 decisions of the Court, the provision would have to read:

“…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…”

Explaining the above, the Court noted that in the exact structure of Section 16(1), the Section incorporates a comma after “if he so desires”, but there is no such comma after “raised by the Controller”. If such a comma had been contained in the section 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 to both situations of divisional applications. However, since there is no comma after the words “the objection raised by the Controller”, it is understood 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.

Accordingly, the Court remarked that the decision of the legislature not to incorporate a comma after “raised by the Controller” in Section 16(1) appears to be with a view to bring the provision in sync with Article 4(G) of the Paris Convention.

Conclusively, the Court opined that if the Applicant is seeking to file a Divisional Application to remedy of objection raised by the Controller, such an application would be maintainable only if the Controller’s objection is on the ground that the claims of the complete specification related to more than one invention. If, however, the Divisional Application is being filed suo moto “if he so desires”, this requirement, prima facie, does not apply.

In respect of the second issue, the Applicant submitted that the requirement of plurality of inventions was not necessarily limited to the claims in the parent application, but would also encompass situations in which the plurality of inventions were disclosed in the complete specifications in the parent application.

The Applicant submitted that Section 16(1) uses two distinct expressions; “relate to” and “disclosed in”, and the significance of the use of these two distinct expressions cannot be overlooked.

While, 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.

The Court agreed with the Applicant and noted 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.

The Applicant referred to Serial number 5 in the Form 2 (which sets out the form both of provisional and specifications) which provides:

“5. CLAIMS (not applicable for provisional specification. Claims should start with the preamble –“ I/we claim” on separate page).”

Additionally, the Applicant referred to Clause 05.02.02 in the Manual of the Patent Office Practice and Procedure which states:

a) A Provisional Specification shall essentially contain the title and description of the invention and shall start with a preamble “The following Specification describes the invention.” Claims may not be included in the Provisional Specification as the purpose of filing a Provisional Specification is to claim a priority date.”

Accordingly, it was the Applicant’s submission that since Section 16(1) of the Act permits a divisional application to be filed even in respect of an invention disclosed in the provisional specification (of the parent application), it is to be understood that if the requirement of plurality of inventions being claimed in the parent application were to apply, no divisional application could ever be filed where the parent application contains only provisional specifications, as provisional specifications are not to include claims.

In as much 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.

Agreeing with the submissions of the Applicant, the Court opined that it is apparently for this reason that Section 16(1) concludes with the words “filed a further application in respect of an invention disclosed in the provisional or complete specifications already filed in respect of the first mentioned application”.

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.

Conclusion:

The present case represents a new viewpoint of the Court, and the case has been subsequently referred to a Divisional Bench for further examination of the issues. Nonetheless, the Court's interpretation brings tremendous relief to Applicants. We are hopeful that the Division Bench will agree with the findings of the Court.