Maintainability of a divisional application in India, has long been a subject of interpretational dilemma. However, a recent judgment from a Division Bench of the Delhi High Court has clarified the statutory stand on the subject.
A landmark case concerning the scope of divisional patent applications under Section 16 of the Patents Act, 1970 (Act) was adjudicated on 13 October 2023 in the matter of Syngenta Limited v. Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 471/2022.
The Division Bench held that, while plurality of inventions may be the criterion for filing a divisional application U/S 16 of the Act, the ‘plurality’ need not be restricted only to the claims. The presence of more than one invention may equally be ascertained from the provisional/ complete specification.
A decision of the Delhi High Court [Boehringer Ingelheim International GmbH Vs. The Controller of Patents dated 12 July 2022] made it clear that a divisional application is maintainable only if the claims in the divisional application were present in the claims of the first (parent) application. The decision categorically stated that "if the invention [to be pursued in the divisional application] 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. 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’."
Having said that, another single bench of the DHC has subsequently (Syngenta vs. Controller) taken a contrary view to the Boehringer decision and referred the matter to the Division Bench (DB), to re-look at the criteria needed for filing a divisional application in India. In Syngenta vs. Controller, the single bench Judge, inter alia, came to the conclusion that a divisional filed suo moto by the applicant is sustainable, so long as its claims are supported by the original disclosure of the parent and that there is no need for the divisional claims to find support in the parent claims, nor is there any need to fulfil the condition that the divisional claims relate to an invention distinct from that claimed in the parent.
The Single Judge raised mainly two questions to the Division Bench:
- Does the requirement of a plurality of inventions being contained in the parent application, in order for a Divisional Application to be maintainable, apply even where the Divisional Application is filed by the applicant suo moto, and not on the basis of any objection raised by the Controller
- Assuming that the requirement of a plurality of inventions 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 plurality of inventions is reflected in the disclosures in the complete specifications accompanying the claims in the parent application?
The Division Bench firstly held that a Divisional Application either suo moto by the applicant or while meeting an objection raised by the Controller, would have to be answered on identical lines.
The Division Bench further held that there is no justification to restrict the filing of a Divisional Application only to a situation where the plurality of inventions is found in the claims, when the statute is unambiguous about the invention to be claimed in the purported divisional being disclosed in the provisional or complete specification already filed. The Division Bench reasoned that no claims were required in the case of a provisional filing since, if the Boehringer argument were to be upheld, no divisional application could be brought when a provisional specification was made. The Division Bench held that the judgment in Boehringer case stands overruled.
Contrary to the observation made in Boehringer decision, the Bench held that the doctrine of "what is not claimed is disclaimed" may be pertinent to infringement analysis, but it has no application to the subject of divisional filing and claim drafting. There thus does not appear to be any justification to impute the principle of “what is not claimed is disclaimed” for the purposes of discerning the scope of Section 16. This more so when the language of Section 16 in clear terms requires the plurality of inventions to be gathered from disclosures made either in the provisional or the complete specification.
Therefore, a divisional application, whether suo moto or in response to the Controller’s objection on non-unity, may sustain as long as the claimed divisional invention is disclosed either in provisional/ complete specification. The clarification would hopefully expedite processing of many divisional applications already caught up in the prevailing dilemma.