Delhi HC Overrules Boehringer Decision, Says Divisional Application Under Patents Act Maintainable If Plurality Of Invention Disclosed In Specifications

While answering a reference, a Division Bench of the Delhi High Court comprising Justices Yashwant Varma and Dharmesh Sharma recently overruled the judgment passed by a Single Bench in Boehringer Ingelheim International GMBH v. The Controller of Patents.

The decision came to be rendered in the context of Section 16 of the Patents Act, 1970. This provision allows filing of a further (divisional) application w.r.t. an invention disclosed in the specifications of a preceding patent application, suo motu or consequent to an objection raised by the Controller.

Background

Syngenta is a corporation engaged in R&D, which also manufactures and distributes chemicals, agriculture and healthcare related products worldwide.

In 2005, it had made an application to the Controller w.r.t. its invention pertaining to an agrochemical concentrate. While this application was pending, a divisional application had been filed by Syngenta seeking to amend its claim(s).

The original application came to be granted, but the divisional application was rejected on the basis that if Syngenta wanted to file a divisional application, it ought to have disclosed more than one invention in the parent application.

Aggrieved by the order rejecting its divisional application, Syngenta filed the appeal.

Proceedings before Single Bench

During the proceedings before a Single Bench of Justice C. Hari Shankar, Advocate Sushil Kumar Pandey appearing for the Controller referred to the decision in Boehringer Ingelheim, wherein another Single Bench had relied on the doctrine “what is not claimed is disclaimed” to conclude that for a divisional application to be maintainable, plurality of inventions must form part of the claims in the parent application.

Justice Shankar did not concur with this view and opined, that it was sufficient for plurality of inventions to be disclosed in provisional or complete specifications and, that the requirement of plurality of inventions being present in the original application does not apply when a divisional application is filed suo motu.

Believing that the view taken in Boehringer Ingelheim needed to be revisited, Justice Shankar made the reference, which raised two questions before the Division Bench w.r.t. maintainability of a divisional application.

First, whether the requirement of plurality of invention being contained in the parent application applied even when a divisional application was filed suo motu, and second, if plurality of invention need be contained in the parent application, whether it would suffice if it was reflected in provisional or complete specification (and not claims).

Proceedings before Division Bench

Before the Division Bench, Advocate Pravin Anand argued on behalf of Syngenta that maintainability of a divisional application was a question to be answered independent of the outcome of the parent application. Additionally, he asserted that the only proscription which Section 16 carried was that there shall be no duplication of claims in the parent and divisional application.

After hearing the contentions, the Bench opined that the doctrine “what is not claimed is disclaimed” had no application to divisional filing and claim drafting. It said that if the view expressed in Boehringer Ingelheim was accepted, no divisional application would be maintainable in a case where a provisional specification was presented. The Bench underlined that in the case of a provisional filing, claims need not be specified at all.

While answering the first question referred to it, the Bench held that there was no perceivable dichotomy in Section 16 w.r.t. divisional applications filed suo motu vis-à-vis those filed pursuant to objection being 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”, the court said.

With regard to the second question, the Bench explicated that Section 16 unambiguously enables filing of a divisional application, provided plurality of inventions is disclosed in the provisional or complete specification already filed.

The Bench’s view was bolstered by clause 05.02.02 of the Manual of the Patent Office Practice and Procedure, which stipulates that a provisional specification may not include any claims at all. Holding that acceptance of the view taken in Boehringer Ingelheim would lead to an incongruous situation, it said,

“It is this significant facet which additionally convinces us to hold that Boehringer Ingelheim was clearly decided incorrectly when it held that the existence of plural inventions must be found in the claims.”

Mr. Pravin Anand, Ms. Archana Shanker, Ms. Gitika Suri and Mr. Ashutosh Upadhyaya, Advocates appeared for Appellant-Syngenta

Mr. Sushil Kumar Pandey and Mr. Kuldeep Singh, Advocates appeared for Respondent

Mr. Rajiv Kumar Choudhary and Mr. Vikram Singh Dalal, Advocates appeared for Intervenor

Case Title: Syngenta Limited v. Controller of Patents and Designs

Citation: 2023 LiveLaw (Del) 1029

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