Is Requirement Of Plurality Of Inventions In Parent Application Necessary For Suo Motu Divisional Application To Be Maintainable? Delhi HC To Decide

The Delhi High Court is set to examine a question as to whether the requirement of plurality of inventions in the parent patent application is necessary for a divisional application to be maintainable even where it is filed by the applicant suo moto and not on the basis of any objection raised by the Controller of Patents and Designs.

Justice C Hari Shankar referred the question to be decided by a division bench to be constituted by Chief Justice.

The court also framed the question that assuming if the such requirement in the parent application is necessary for a divisional application to be maintainable, does the plurality of inventions have to be reflected in the claims in the parent application or is it sufficient if the same is reflected in disclosures in complete specifications accompanying the claims in the parent application.

“The Registry is directed to place this matter before Hon’ble the Chief Justice for constituting an appropriate Division Bench to examine the aforesaid issues and return its view thereon, as they affect a large number of cases,” the court said.

Justice Shankar was hearing an appeal moved by Syngenta Limited challenging an order passed by the Deputy Controller of Patents and Designs dismissing its divisional application seeking a patent for “Agrochemical concentrate comprising an adjuvant and hydrotrope.”

A divisional application under Section 16 of the Patents Act, 1970, is filed after an objection is made by the Patent Office on the unity of invention, or voluntarily by the applicant if the claims of the parent application are disclosed to be more than one invention.

Section 16 of the Act lays down the principle for filing of a divisional application which can be filed anytime before the grant or refusal of the parent application.

Analyzing the provision in question, Justice Shankar observed that if the applicant is seeking to file a divisional application to remedy the objection raised by the Controller, such an application would be maintainable only if the Controller’s objection is on the ground that the claims of the complete specification relate to more than one invention.

“If, however, the Divisional Application is being filed suo moto “if he so desires”, this requirement, prima facie, does not apply,” the court said.

It added: “While, therefore, the claims in the parent application must relate to a plurality of inventions – assuming, as the impugned order holds, this requirement to indeed be a sine qua non for a divisional application to be maintainable – it would suffice if the divisional application is filed in respect of an invention (forming part of the plurality) disclosed in the provisional or complete specifications. The provision does not, as it stands, appear to require the plurality of inventions to form part of the claims in the parent application.”

The court observed that Syngenta’s application could not have been rejected by the Deputy Controller solely on the ground that the plurality of inventions was not specifically contained in the claim and that it was done only in the disclosure contained in the complete specifications.

Justice Shankar thus differed with a 2022 decision of a coordinate bench in Boehringer Ingelheim International GMBH v. The Controller of Patents wherein it was held that the divisional application can be filed only if the claims in the parent application relate to more than one invention.

The coordinate bench had also said that the plurality of inventions is required to be contained in the claims in parent application and it is not sufficient if the same are to be found in the complete specifications accompanying the claims in the parent application.

“As, for the reasons elucidated hereinabove, I am not able to convince myself that this is the correct position, I deem it appropriate to refer the following questions for consideration by a Division Bench of this Court to be constituted by and subject to orders of Hon’ble the Chief Justice,” the court said.

Title: SYNGENTA LIMITED v. CONTROLLER OF PATENTS AND DESIGNS

Citation: 2023 LiveLaw (Del) 636

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