Syngenta Limited v. Controller of Patents and Designs [C.A (COMM.IPD-PAT) 471/2022]: Syngenta Limited (“Appellant”) had filed an appeal against the impugned order of the Ld. Controller of Patents and Designs. The appeal pertained to the interpretation of the scope of divisional application under Section 16 of the Patents Act, 1970 (“Act”). The origin of the Divisional Application can be traced back to the Appellant’s parent application with the objective of patenting an “agrochemical concentrate comprising an adjuvant and hydrotrope.”
The Controller, while refusing the divisional application, held that a divisional application could only be filed if the parent application incorporated claims pertaining to multiple distinct inventions. Additionally, the Controller posited that a divisional application could not be predicated solely on the information provided in the specification accompanying the parent application.
The Single Bench of the Delhi High Court had elucidated the Controller's interpretation (click here to read our previous update on this matter). The Single Judge opined that, to file a divisional application, the parent application should indeed contain claims related to multiple distinct inventions. This constraining perspective seemingly mandated the inclusion of such claims in the parent application and discouraged reliance solely on the disclosures found within the specification. Moreover, the Ld. Single Judge, expressing doubts about the correctness of the position taken in the case of Boehringer Ingelheim International GmbH v. The Controller of Patents (“Boehringer Ingelheim”), formulated the following two pivotal inquiries for the Division Bench (“DB”) to scrutinize and offer its perspective on the maintainability of a divisional application:
Does the stipulation requiring a plurality of inventions to be encompassed in the parent application apply even when the Divisional Application is initiated by the applicant spontaneously and not in response to any objection raised by the Controller?
Assuming that the inclusion of multiple inventions in the parent application is mandatory, must these multiple inventions be explicitly articulated in the claims of the parent application, or is it sufficient if they are set forth in the disclosures within the complete specifications of the parent application?
In the Boehringer Ingelheim case, it was established that in the absence of a plurality of inventions within the claims of the parent application, a divisional application would not be maintainable. It was also stated in that case that allowing the filing of divisional applications without a plurality of inventions in the claims would contradict the fundamental tenet of patent law, namely, “what is not claimed is disclaimed.”
Upon addressing these questions, the DB determined that while a plurality of inventions is indeed, a prerequisite for filing a divisional application, this plurality can be ascertained from the provisional or complete specification and need not be rigidly confined to the claims. Thus, the application would remain admissible, whether filed Suo moto or in response to an objection raised by the Controller.
Furthermore, the DB made a significant observation that the principle of “what is not claimed is disclaimed” may be applicable in the context of infringement analysis but should not be applied to divisional application submission and claim drafting. The DB asserted that there was no valid basis to attribute this principle to divisional applications, consequently overturning the Boehringer Ingelheim case ruling.
The DB has further emphasized that Section 16(1) of the Act allows for the submission of a supplementary application for an invention if it is disclosed in the provisional or complete specification previously submitted with the parent application, expanding the possibilities for filing a Divisional Application, even when the claims in the parent application did not overtly address multiple distinct inventions.
The Verdict:
The DB has clarified the scope of divisional applications by confirming that such an application is admissible not only based on claims but also on disclosure within the provisional or complete specification of the patent. This interpretation aligns with legislative intent and accommodates situations where multiple inventions are not explicitly claimed in the parent application but are disclosed within the specifications.
Syngenta Limited v. Controller of Patents and Designs, C.A. (COMM. IPD-PAT) 471/2022