India: Divisional Patent Applications-Delhi High Court Clarifies The Scope
This is a follow-up to our previous report (see here), wherein we reported that in an appeal filed by Syngenta Limited against a refusal order of the Indian Patent Office, a Single Judge of the Delhi High Court opined on important issues related to suo moto filing of divisional applications and referred two important questions to a Division Bench of the High Court:
“(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?”
The decision of the Divisional Bench reinforces our consistent opinion to our clients to continue filing divisional applications in India in cases where a plurality of inventions are disclosed in the specification of the parent application (even if not in the claims). The Court's interpretation aligns perfectly with our comprehension and recommendations to our clients looking for a comprehensive patenting strategy for divisional applications on a global scale. The following are important findings of the Court.
The Division Bench held that a divisional application can be filed based on subject matter disclosed in the provisional or complete specification already filed.
Importantly, the Division Bench went beyond the interpretation of the Single Judge and noted that on due consideration of Section 16, it is not possible to find or perceive an intended distinction or dichotomy with respect to the filing of Divisional Applications based on whether the same is filed suo moto or is activated by an objection that may be raised by the Controller.
Thus, the Division Bench concluded that irrespective of whether the Application is filed by the applicant suo moto or to remedy an objection raised by the Controller, the Divisional Application could well be maintained in either of those situations, subject to the plurality of inventions being evidenced from the disclosures made in either the provisional or the complete specification.
The present decision comes as a big relief to Applicants and overturns all previous decisions that offered a restrictive approach to filing of Divisional applications in India.