[Patents Act] Unity Or Plurality Of Inventions & Whether They Form Single Inventive Concept To Be Determined From Claims: Delhi High Court

The Delhi High Court has observed that under the law of patent, "unity of the invention" or "plurality of inventions" and whether they form a "single inventive concept" has to be gleaned from a reading of the claims.

Going through various provisions of the Patents Act, 1970, Justice Pratibha M Singh said:

"The complete specification also describes the procedures, processes, methods, including the best methods. But what is crucial to note, is the fact that the invention itself is defined in the claims. While such claims do have to be based on the disclosure in the specification, however even if a person does not read the complete specification and wishes to identify the invention, the place to look for it is in the 'Claims'."

"The Invention thus resides in the Claims. Accordingly, "unity of the invention"/ "plurality of inventions" and whether they form a "single inventive concept" has to be gleaned from a reading of the claims."

The Court was dealing with an appeal challenging the order dated 25th March, 2022 by which the Controller of Patents had rejected the request of the Appellant for pursuing a divisional application titled 'A medicament of a DPP inhibitor'.

The Controller, while rejecting the divisional application stated that it had similar claims, as had already been proffered in the refused amendment applications and that the divisional application did not fall within the scope of the parent application.

The Applicant had filed a National Phase PCT Application on 14th November, 2008, for 'Use of DPP IV Inhibitors'. The patent specification had a total of 1 to 18 Claims, with two claims numbered as 15 (15 and 15A).

The First Examination Report was issued on 24th March, 2014, in response to which the Applicant amended its Claims on 24th October, 2014. In the said Amendment No.1, the Applicant sought to delete all Claims except Claims 14, 15 & 15A.

Thereafter, in 2015-2016 i.e., on 20th March, 2015 and 18th February, 2016, two Forms-13 were filed by the Applicant seeking two further amendments. These two amendments were sought to be converted into a divisional application filed on 4th September, 2017. The said application was rejected vide the impugned order.

The Controller applied sec. 59 of the Patents Act, 1970 and held that the said amended claims i.e., Claims 1 to 11 and Claims 1 to 15 were beyond the scope of originally filed Claims and rejected the same.

Accordingly, vide order dated 4th January, 2018, the Patent Application which was the parent application, was refused under sec. 15 of the Act. Amendment Nos. 2&3 were also rejected by the Controller, but by the time this order was passed, the Applicant had filed a divisional application qua those claims.

The Court was of the view that regarding the divisional application, the matter raised an important issue as to whether divisional applications can be filed for claims, when such claims were not part of the claims in the parent application?

The Court observed that a divisional application under sec. 16 of the Act, has to be an application which arises from a parent application disclosing a "plurality of inventions".

"In Section 16(1), the phrase "the claims of the complete specification relate to more than one invention" makes this position clear. Section 16(3) also makes it clear that there cannot be duplication of the claims in the two specifications i.e., parent specification and the divisional application. This leads us to the question as to how to determine "plurality of inventions". For this, guidance can be drawn from Section 10 of the Act which elaborates on the meaning of complete specification and scope of claims," it said.

It added "But what is crucial to note, is the fact that the invention itself is defined in the claims. While such claims do have to be based on the disclosure in the specification, however even if a person does not read the complete specification and wishes to identify the invention, the place to look for it is in the 'Claims'."

It therefore observed that under sec. 16 of the Act, the "plurality of inventions" should clearly exist in the claims of the original parent application and within the scope of the specification of the parent application. 

The Court added that under sec. 16, the question of whether the claims of the complete specification relate to more than invention i.e., a "plurality of inventions" has to be seen from the claims of the parent application.

It was however added that if the invention is not contained in the claims of the parent application, the divisional application cannot be permitted to be filed solely on the basis of disclosure made in the specification, in respect of alleged inventions.

"If applicants are permitted to file such divisional applications on the basis of disclosure in the complete specification, without such inventions being claimed in parent applications, it would defeat the fundamental rule of patent law i.e., 'what is not claim is disclaimed'.1 Similarly, Section 59 also makes it clear that amendments beyond the scope of the specification and claims would not be permissible," it said.

With the said observations, the Court dismissed the appeal as being completely devoid of any merits, with a cost of Rs.50,000 to be paid by the Applicant within four weeks.

The Court said that out of the said amount, Rs.25,000 shall be paid to the Counsel for the Respondent and the remaining Rs.25,000 shall be paid to the DHCBA Pandemic Relief Fund.

"The said amount shall be utilised only for the purposes of distribution to lawyers and their families who have deceased during the pandemic. Hony. Secretary, Delhi High Court Bar Association to confirm receipt of the said amount, within four weeks," the Court ordered.

Case Title: BOEHRINGER INGELHEIM INTERNATIONAL GMBH v. THE CONTROLLER OF PATENTS & ANR.

Citation: 2022 LiveLaw (Del) 726

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