Divide If Disclosed: Divisional Patent Applications Interpreted By Syngenta Limited V. Controller Of Patents And Designs

Divisional patent applications serve the purpose of segregating the content of an application, ensuring that each application, including the parent and all divisionals, focuses on distinct inventions. This, in turn, allows for a more precise examination and protection of these inventions. A divisional application exclusively lays claim to one or more, but not all, of the independent inventions originally presented in the parent application, while retaining the benefit of the parent's initial filing date. It is imperative that each application maintains a strict focus on one invention or a "group of inventions, so interrelated as to constitute a single overarching inventive concept" to be deemed acceptable.

Divisional Patent Applications Around the World

Per US law, 35 U.S.C. 121, If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. As per Art. 82, Rule 36, Ch. 5.8Divisional applications, of the European Patent Convention; European Patent Guide at 002, a divisional application may be filed only for subject-matter which does not extend beyond the content of the parent application as filed. Article 44 of the Patent Act, Japan, claims of divisional applications must not be substantially the same as the claims rejected in parent applications, disclosures of the divisional applications shall be within the scope of the original disclosures of parent applications and further shall be within the scope of the disclosure of the parent applications immediately before the division

In many regions, voluntary divisional applications may be submitted at any time while the parent application is pending. In jurisdictions that conduct examinations, divisional applications are often a response to a restriction requirement or a lack of unity objection issued by the examiner within an Office Action. In essence, a single application should not encompass multiple, distinct inventions. When an application lacks unity of invention, the examiner may instruct the applicant to separate the additional inventions from the original submission. In such scenarios, the applicant can file one or more divisional applications, each of which claims a singular inventive concept. Importantly, the claims made in a divisional application must align with the content of the original specification and may not introduce new subject matter.

Legal Position in India

Pursuant to Section 16 of the Indian Patent Act, 1970, the following key provisions are established:

An applicant retains the option to proactively initiate the submission of a divisional application.

Alternatively, an applicant may file a divisional patent application as a response to an objection raised by the examiner during the examination process.

The Intellectual Property Appellate Board (IPAB) in Esco Corporation v. Controller of Patents & Design, OA/66/2020 PT/DEL / clarified that that while applicants possess the right to initiate divisional applications at their discretion, the authority to grant such requests lies solely with the Controller. The Controller exercises this discretion following a comprehensive evaluation to ascertain the presence of multiple inventions claimed within the original patent application, thereby ensuring the avoidance of issues related to double patenting. It further held that unity of invention should be ascertained independently of whether the invention is presented as separate claims or as alternative options within a single claim.

Therefore, if an application encompasses multiple inventions or a group of inventions that fall into different categories and are not inherently connected in a way that forms a single overarching inventive concept, it is considered to consist of a plurality of inventions.

It is imperative that a divisional application refrains from duplicating claims present in the original parent application. Moreover, the content of the divisional patent should encompass and be relevant exclusively to the subject matter and specifications disclosed in the parent application.

The priority date for divisional applications consistently corresponds to that of the parent application. Generally, divisional patent applications maintain their validity for a period of 20 years from the date of filing of the parent application.

In Boehringer Ingelheim International GMBH v. The Controller ofPatents & Anr, C.A. (COMM.IPD-PAT) 295/2022 & I.As.10369-70/2022, the applicant had modified the claims in the parent application, originally directed at methods or uses, to encompass products (medicaments or combinations) during the examination process. These amended claims were subsequently pursued in the divisional application just before the rejection of the parent application. While the rejection of the parent application primarily centered on issues of novelty and inventive step, the conversion of 'use' claims into 'product' claims for a combination medicament of DPP-IV inhibitors with other antidiabetics, as pursued in the divisional application, was found to be impermissible under Section 16 and Section 59 of the Act. Given that the product claims in the divisional application had no basis in the claims of the parent application, any claims that could have pertained to the product were regarded as effectively disclaimed by the applicant. Consequently, the divisional application, as filed, was determined to be invalid. The Court's ruling emphasized that divisional applications cannot be permitted solely on the basis of disclosures within the complete specification without the existence of corresponding claims in the parent application. Such a practice would run counter to one of the fundamental principles of patent law, which is that anything not explicitly claimed is considered disclaimed.

The Court in Syngenta

In the case of Syngenta Limited v. Controller of Patents and Designs, a Division Bench of the Delhi High Court, on October 13, 2023, was addressing a referral made by a Single Judge of the Delhi High Court. The issue at hand pertained to the interpretation of divisional patent applications under Section 16 of the Patents Act, 1970.

The two question referred for the consideration of the Division Bench were:

1. Does the necessity for multiple inventions to exist within the parent application, as a condition for maintaining a Divisional Application, apply when the Divisional Application is initiated by the applicant voluntarily, and not prompted by any objection from the Controller?
2. In the event that the requirement for multiple inventions in the parent application is deemed necessary for the validity of a Divisional Application, must these multiple inventions be explicitly stated in the claims of the parent application, or is it sufficient if they are disclosed within the complete specifications accompanying the claims in the parent application?

Regarding Question 1, the Court held that upon careful examination of Section 16, they found no intended differentiation or distinction in the filing of Divisional Applications based on whether they are initiated voluntarily by the applicant or in response to an objection raised by the Controller. Section 16(1) does not seem to support such a distinction. Therefore, they opined that regardless of whether the applicant files the application voluntarily or in response to a Controller's objection, a Divisional Application may be maintained in both scenarios, provided that the presence of multiple inventions is evident from the disclosures within either the provisional or the complete specification.

Regarding Question 2, the Court held that Section 16(1) is quite explicit in allowing the filing of an additional application for an invention, as long as it is already disclosed within the provisional or complete specification that has been submitted. The Court held that there is no reasonable basis for confining the filing of a Divisional Application solely to situations where a plurality of inventions is found within the claims. The choice of language within the provision, which employs the phrase "disclosed in the provisional or complete specification," carries significant weight and should not be disregarded. While the Legislature could have imposed restrictions by mandating that multiple inventions must be explicitly embodied or identifiable in the originally filed claims, it has clearly and unequivocally stipulated that such plurality should be evident from the provisional or complete specification. The Court stated that the provision's structure leaves no room for ambiguity, and the language employed leaves no room for doubt regarding its clear intention.

The Court therefore affirmed that a Divisional Application filed in accordance with Section 16 of the Act remains valid as long as the presence of multiple inventions is revealed in the provisional or complete specification submitted. It further held that Section 16 does not envision any differentiation between the scenarios of a Divisional Application initiated by the applicant voluntarily or in response to a Controller's objection. In both circumstances, the determination of the existence of multiple inventions must be based on the disclosures contained within either the provisional or complete specification.

The Future of Divisional Patent Application in India

The interpretation of Section 16 and the answers provided by the Division Bench to the two questions posed by the single judge in the Syngenta case carry significant implications for patent prosecution in India in the future.

1. No Distinction Between Voluntary and Controller-Prompted Divisional Applications: The Division Bench's ruling clarifies that Section 16 does not differentiate between Divisional Applications initiated voluntarily by applicants and those filed in response to Controller's objections. This uniform treatment ensures that applicants have flexibility in deciding when and how to file Divisional Applications. This interpretation simplifies patent prosecution and makes it more efficient for applicants, as they can initiate Divisional Applications according to their strategic objectives without facing unnecessary procedural constraints.

2. Focus on Specification Over Claims: The Court's emphasis on the "disclosure in the provisional or complete specification" as the basis for determining the existence of multiple inventions signifies a shift from a strict reliance on claims. This interpretation allows for a more expansive approach to considering inventions, which may not be explicitly claimed but are adequately disclosed in the specification. It provides applicants with greater latitude in claiming inventions that might have been overlooked during the initial drafting of claims. This approach can promote innovation and provide more comprehensive protection for inventions.

3. Clarity in Patent Filing Strategy: The judgment encourages patent applicants to adopt a more meticulous approach to drafting provisional or complete specifications. By ensuring that all potential inventions are adequately disclosed in these documents, applicants can subsequently file Divisional Applications with confidence. This approach aligns with the broader goal of minimizing the likelihood of disputes and refusals during patent prosecution.

4. Risk of Overbroad Disclosures: While the ruling facilitates a broader interpretation of disclosed inventions, there is a potential risk that applicants may be inclined to over-disclose in their specifications to secure future patent opportunities. This could lead to extensive and overly complex patent specifications, which may not always be in the best interests of the patent system or the public.

In conclusion, the Syngenta case has the potential to streamline and enhance the patent prosecution process in India. It offers greater flexibility to applicants in filing Divisional Applications and encourages a more expansive approach to recognizing inventions within patent specifications. However, it also places a responsibility on applicants to carefully manage their disclosure practices to maintain the integrity and quality of the patent system. This judgment underscores the importance of clarity and precision in patent prosecution strategies, promoting both innovation and the protection of intellectual property.

Lakshmidevi Somanath is former Member, IPAB, Govt of India. Views are personal.