Understanding the recent Delhi High Court decision in Syngenta Limited vs Controller of Patents and Designs, decided on 13th October 2023 in reference to section 16 of the Patents Act of 1970.
Relevant Sections Concerning Division of Patent Application:
As per the India patent law, one patent application can relate to only one invention or there should be a single inventive concept. While filing patent application , it is vital that the invention claimed passes the test of unity of invention . As per section 10(5) of the Patents Act 1970, the claim or claims of a complete specification of a patent application shall relate to a single invention or to a group of inventions linked to form a single inventive concept .
Incase where a patent application embodies plurality of inventions, the practice is to divide the application in a way as laid down under section 16, which details the law on division of a patent application before the grant of patent and the power of Controller to make orders in respect of such division of application.
Let’s glance at what Section 16 of the Patent Act 1970 says
Section 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.
(2). The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.
(3). The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.
Explanation.—For the purposes of this Act, the further application and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.
Questions of law :
Questions with regards to section 16 was deliberated upon in a recent Delhi High Court decision in “Syngenta Limited vs Controller of Patents and Designs”, The first question stemmed from the fact that, general trend is in favour of filing for divisional patent application only with a view to remedy objections raised in examination report issued by Controller of Patents , when the objection is aimed at plurality of invention.
The Court in this case opined on whether 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?
Second question pertained to whether the basis of plurality of invention for filing a divisional application to be maintainable needs to be reflected specifically in the claims of 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? In other words whether the plurality of invention should be restricted to claims of the original patent application or it can be inferred from what is embodied in the literature of the complete specification.
The Appellant Syngenta’s original application for agrochemical concentrate comprising an adjuvant and hydrotope, was granted post examination. In the meantime a divisional application was also filed by it which was rejected on the ground that plurality of invention was not disclosed in the claims. Appellant contented that it was sufficient that plurality is inferred from the description of complete specification for filing a divisional application
While deciding this case the correctness of earlier decision on this issue in Boehringer Ingelheim came into question, where the view as taken that
… if any specification claims either a single invention or a group of invention linked to form a single inventive concept the requirement of “unity of invention” is satisfied…
if there is no objection on the ground of plurality of distinct inventions‚ means the claims of the complete specification, contains either a single invention or a group of inventions linked so as to form a single inventive concept and in such a scenario, no divisional application is allowable.
What it declares is that if plurality of invention is not contained in the claims of specification, divisional application is not maintainable.
The Verdict :
The factors considered while resolving these issues include
firstly, as per section 16(1) an applicant divisional application can be filed if plurality exists in provisional patent application or complete specification.
Keeping in mind that it is not mandatory as per patent manual that provisional specification contain claims. It is filed primarily with an aim to claim priority date. Thus it can be inferred that if plurality of invention is to be assessed in provisional application, it may be from the literature of the description and not necessarily from claims.
Also, on reading section 16, we can infer from subsection (1) that Applicant can file a divisional application either on its own motion or to remedy objections raised by the Controller.
Analysing various judgments and legal provisions relied on by the parties to the dispute, the court overruled Boehringer Ingelhein decision and held that a Divisional Application moved in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed. We are further of the considered opinion that Section 16 does not suggest or conceive of a distinction between the contingency of a Divisional Application when moved by the applicant of its own motion or where it comes to be made to remedy an objection raised by the Controller. In either of those situations, the plurality of inventions would have to be tested based upon the disclosures made in either the provisional or complete specification.
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