FOR A SUO MOTO DIVISIONAL APPLICATION TO BE MAINTAINABLE, IS PLURALITY OF INVENTIONS REQUIRED TO BE MENTIONED IN THE PARENT APPLICATION? DELHI HIGH COURT TO DECIDE ON KEY PATENT ISSUE

FOR A SUO MOTO DIVISIONAL APPLICATION TO BE MAINTAINABLE, IS PLURALITY OF INVENTIONS REQUIRED TO BE MENTIONED IN THE PARENT APPLICATION? DELHI HIGH COURT TO DECIDE ON KEY PATENT ISSUE

Justice Hari Shankar of the Delhi High Court has referred a matter arising out of an appellate proceeding, to be examined on the following two issues-

1. When a divisional application is filed suo moto by a Patent applicant and not upon objections raised by the Controller, is it necessary for the plurality of inventions to be mentioned in the parent application for such divisional application to be maintainable?

2. In case plurality of inventions is required to be in the parent application in case of a suo moto filing of a divisional application, do these plurality of inventions need to need to be mentioned in the ‘claims’ of the parent application or in the disclosures in the complete specification that accompany claims?

Before the Court was a matter arising out of an appeal filed by Syngenta Limited challenging an order of the Controller of Patents and Designs that refused their Patent application for the Patent titled “Agrochemical concentrate comprising an adjuvant and hydrotrope”.

The Appellant filed a Divisional Application under Section 16 of the Patents Act 1970, post their patent application stating a specified type of combination of those combinations which were mentioned in the complete specification of the parent application. This however was rejected on the grounds that the claims of the Parent and Divisional Application are not of the same scope and do not fall under Section 16. Further, in order for it to be under the said provision, the parent application needs to have disclosed more than one invention and not the very same invention.

The Court upon analysis observed that the patent application filed by Syngenta should not have been rejected only on the contention that the plurality of inventions was not specifically contained in the claim, and only in the disclosure contained in the complete specifications. Further, such an application cannot be filed suo moto by the applicant without any objection of plurality raised by the Controller.

Answering the first issue, the Court observed that Section 16 of the Patents Act in its explanation lacks a comma after the word “raised by the Controller” but exists after the word “if he so desires”. In support of such observation, the court said-

“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 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. Where there is no comma after the words “the objection raised by the Controller”, however, it is plain 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. Further, “Punctuation, in a statue, is often determinative of its construction”.

It was hence stated that an applicant filing a divisional application is maintainable if filed as a remedy to an objection raised by the Controller and such objection is on the grounds that the claims of the complete specification relate to more than one invention and is not maintainable if filed suo moto.

Justice Hari Shankar also expressed his disagreement with the findings in the case of Boehringer Ingelheim International GMBH vs. The Controller of Patents that held that the plurality of the inventions shall exist in the claims of the original parent application and it is not enough if they are in the specifications of the parent application.

Lastly, while referring the issues formed in the case to be examined by the Division Bench of this Court upon orders of the Chief Justice, Justice Hari Shankar stated the following-

“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.”