Ease of Filing Divisional Applications in India After Syngenta Decision

The question of filing suo moto divisional patent applications in India raised many issues at the patent office and the courts alike. The position of the patent office has been that the applicant is allowed to divide the patent application only in cases where the controller finds that the claims of the complete specification relate to more than one invention. This position has been endorsed by the courts, particularly in Boehringer Ingelheim, where it was laid down that if plurality of inventions is not contained in the claims of the parent application, the divisional application would not be maintainable.

The patent office refused to entertain the divisional application if the division is not triggered by the objection for a lack of unity objection under Section 10(5) of the Patents Act, 1970 (the “Act”). The controller must have objected that the claims presented for examination in the parent application relate to more than one invention. The single judge of the Delhi High Court in the Syngenta case found himself at the crossroads to accept the ruling in Boehringer Ingelheim and referred the issue to a division (two judges) bench of the High Court to provide clarity and answers to two very important questions:

“(i) 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?

(ii) 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?”

It is worthwhile to note that the Syngenta judgement, which came on October 13, 2023, is a landmark judgment in the context of clarification of legal position under Section 16 of the Act relating to the maintainability of suo moto divisional application or if it is triggered by objection for a lack of unity objection by the Controller. This judgement gained importance as it settled that there is no distinction or dichotomy with respect to the filing of divisional applications based on whether the same is filed suo moto or it is activated by an objection that may be raised by the Controller. The court in Syngenta ruled that:

“We, on due consideration of Section 16, fail to find or perceive an intended distinction or dichotomy with respect to the filing of Divisional Applications based on whether the same is filed suo moto or is activated by an objection that may be raised by the Controller. Section 16(1) does not appear to warrant any such distinction being carved out.

Disagreeing with the Boehringer Ingelheim ruling, which endorsed the position of the patent office that ‘if the plurality of inventions is not contained in the claims of the parent application, the Divisional Application would not be maintainable’, the Division Bench in Syngenta ruled that

“We are thus of the firm opinion that irrespective of whether the Application is filed by the applicant suo moto or to remedy an objection raised by the Controller, the Divisional Application could well be maintained in either of those situations, subject to the plurality of inventions being evidenced from the disclosures made in either the provisional or the complete specification.”

This stance of the division bench put to rest the controversy surrounding the maintainability of divisional application only in cases where plurality of distinct invention is reflected in the claims in the parent application. This means that the applicant can file a suo moto divisional application if the plurality of inventions is evidenced from the disclosures made in either the provisional or the complete specification. Accordingly, the plurality of inventions would have to be tested based upon the disclosures made in either the provisional specification or complete specification. The controller cannot decide the maintainability of the divisional application solely based on the claims.

Speaking on the applicability of the precept of “what is not claimed is disclaimed”, the Court in Syngenta ruled that:

“We find ourselves unable to subscribe to the view expressed in Boehringer Ingelheim and when it seeks to base its conclusions on the precept (what is not claimed is disclaimed) as formulated by Lord Russel for the following additional reasons. It would be apposite to recall that Section 16 speaks both of a provisional or a complete specification. However, in the case of a provisional filing, claims need not be specified at all. If the view as expressed in Boehringer Ingelheim were to be accepted no Divisional Application would be maintainable in a case where a provisional specification has been presented. This since the decision bids us to discover the invention solely in the claim.” [Emphasis added]

Thus, the precept “what is not claimed is disclaimed” has no application to the drafting of claims. Further, the Syngenta court looked into the patent office proceedings where the applicant tends to negotiate the scope of his patent application. Further, the court explained the objectives sought to be achieved by permitting the applicant to apply for division based on the observation of the High Court of Justice Chancery Division Patents Court in Koninklijke Philips Electronics NV v. Nintendo of Europe, where the issue of a divisional application being maintained had fallen for consideration. In this case, the court observed as follows: –

“308. Seventh, a patentee may have a legitimate interest in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent. During prosecution of the parent the examiner may object to a broad claim but indicate that a narrower claim would be accepted. The patentee may not agree but may recognise that to win the point will need many more months or even years of proceedings and possibly appeals. This is true in both the EPO and UKIPO. However in the meantime the patentee may want to obtain an early grant because a competitor has launched an infringing competitive product. The infringing product may be very close to the patentee’s invention and within the narrow claim on offer. At an early stage in this new market for a new product the patentee’s business may be particularly vulnerable and the loss caused by the infringement may well not be fully compensatable in damages under s69 of the 1977 Act (Art 67 EPC). Thus the patentee decides to take what is on offer and obtain grant of the parent patent with a narrow claim. Under s76 of the Act and Art 123(3) EPC post grant amendments are not permitted to widen the scope of monopoly so, in order not to give up scope to which the patentee is entitled, a divisional application is filed. If the Divisional is granted with a broader scope than the parent, then the patentee’s stance has been entirely vindicated.” [emphasis added]

The division bench observed that the aforesaid position would also commend acceptance in the context of our Act. This means that the precept of applicability of ‘what is not claimed is disclaimed’ has no application for deciding the maintainability of the divisional application under section 16. In other words, when the claims are repositioned during the prosecution stage or redrafted or narrowed, the patentee may have a legitimate interest in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent. This case now permits the applicant to file division applications before the grant of patents based on the disclosures made in either the provisional specification or complete specification.

Analysing Syngenta – Implications

The following table provides an analysis of the questions answered by the court in the Syngenta case and its limited implications:

Patents (Amendment) Rules, 2024

The Patent Amendment Rules, 2024 came into effect on March 15, 2024, wherein Rule 13 (2A) was inserted, which states that:

A patent applicant may, if he so desires, file one or more further applications under section 16, including in respect of an invention disclosed in the provisional or complete specification or a further application filed under section 16.

Accordingly, the applicant is free to file any number of divisional applications based on the invention disclosed in the provisional or complete specification or a further application if he so desires.

Further, as a corollary, the Syngenta judgement also says:

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 Reference stands answered accordingly.

However, the new Rule 13 (2A), the introduction of which may be attributed to the Syngenta judgement, does not limit the filing of further applications. The new Rule 13 (2A) goes a step ahead and allows filing a second-degree further application under Section 16 for an already filed further application. There seems to be no limit to the degree of further applications. In a number of cases, applications [Lexorbis has two cases] have been granted which were fourth divisional applications in the patent family. This means from the date of filing of the parent application, any matter (which is not even claimed as of now) in the specification may be used to file claims in a further application – theoretically for the next 20 years.

Impact of the Syngenta Ruling: Changed Patent Office Practice

Consequently, after the implementation of the new Rules and the Syngenta judgement, there has been a perceptible change in the patent practice and procedures at the Indian patent office with respect to divisional applications.

Indian Patent Office, as a general practice:

• Required existence of a plurality of inventions in the claims of parent application:

For example, in the matter of Boehringer – Patent App. no. 201718031279, one of the objections raised by the patent office read:

“1. Claims of the parent application 9501/delnp/2008 filed on 14/11/2008 did not contain any plurality of invention u/s 10(5) of the patent act 1970. Therefore the current divisional application is invalid and the current application is not allowed u/s 16(1) of the patent act 1970. Thus novelty and inventive step of the current divisional application is not examined.”

• Did not allow divisional application based on an invention disclosed in provisional specification only (and not claimed), and
• Generally, did not allow second degree division application (based on an earlier filed divisional application of a main/parent application)

For example, in the Milliken matter – App. No. 1631/MUMNP/2007, one of the objections raised by the patent office read:

“The further application can be filed at any time before the grant of the patent to the original or first-mentioned application but there is no provision to file the further application to already filed further application. Hence the instant application does not qualify as a further application as per sec 16(1) of the Patents Act, 1970.”

The aforesaid general practice has changed now to give effect to the new rules, and it is apparent that the Syngenta judgement and the amendment of Rules have come as a big relief for the stakeholders. The understanding that the invention is only that which is claimed in the complete specification of the application has been done away with [till the time the application is alive – waiting for the grant, not abandoned]. No longer do the applicants need to wait to finalise the claims before filing a patent application or lodging the complete specification at the patent office. The whole purpose of filing a provisional specification has been vindicated. It was always logical to lodge your invention in whatever form (as specification – with or without claims) at the patent office and secure a priority date for the fruits of your hard work. Justice Ayyangar also emphasised this point in his famous Ayyangar Committee Report that for a developing nation like India, the provision of filing a patent application with a provisional specification helps the inventors to not worry about the formalities of “claimifying” the research work at an early stage.

The change is apparent in the patent office practice and post-March 15, 2024, when the new rules came into effect. The following changes have been observed in the new patent office practice:

• It is now not necessary that the invention of a divisional application is present in the claims of the parent application as filed.
• A divisional application may be filed for an invention disclosed only (and not necessarily claimed) in the provisional specification.
• A divisional application based on another divisional application is now allowed to be filed.

This change in the practice may be attributed to both the coming into force of the new rule 13 (2A) and the principles corroborated in the Syngenta judgement. The Indian patent office has done away with its stance of finding plurality in the claims alone with respect to the filing of suo moto divisional applications. The Controller is now mandated by the Syngenta ruling to test the plurality of inventions based upon the disclosures made in either the provisional or the complete specification. This means that a divisional application filed under Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed. This rule will be applicable to divisional applications when filed by the applicant on his own motion or where the divisional application comes to be made to remedy an objection raised by the Controller.

Requirements under Sections 16(2) and 16(3) against Double Patenting

Section 16(2) provides:

The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

Foremost, the Act mandates that a further application shall be accompanied by a complete specification. The Act lays down the requirement for the complete specifications of the further and the parent application – that there cannot be any new matter in the complete specification accompanying the further application as compared to the complete specification of the parent application.

Section 16(3) provides:

The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.

Secondly, Section 16 empowers the controller to require amendments of the two complete specifications so that neither includes a claim for the same matter as claimed in the other. Accordingly, the Act does not allow double claiming the same embodiments in two different complete specifications. The examiner, under the requirement as laid down in Section 16(3), requires that the claims of the divisional application have a distinct invention – distinct from the invention in the parent application. This, according to the patent office, is to avoid double patenting of the same invention.

Conclusion

The changes in the patent office practice with respect to filing of the divisional application, as mentioned above, have come as a big relief for the stakeholders. Both the inventors/applicants and the patent agents/advocates have become aware that an invention disclosed in any specification lodged with the patent office is available for claiming at any time before the application is granted. This is clear from the surge in the number of divisional applications being filed – especially in the fast-moving technologies of software-enabled inventions and Telecom. The filing of further applications by the applicant of his own volition – “if he so desires” – has significantly increased. We followed the prosecution of 92 granted divisional applications post March 15, 2024 (when the new rules came into effect).

Of the 92 divisional applications, about 80 were voluntarily filed by the applicants (i.e., where there was no objection by the controller regarding plurality of inventions in the examined claims of the parent application). In about 70 of the 80 voluntarily filed divisional applications, the examination report issued by the Indian Patent Office contained an objection as to the maintainability of the (voluntarily filed) divisional application. A closer examination by our team of responses to the examination filed in these 70 cases revealed a very encouraging aspect.

It is noteworthy that in only 13 (out of the 70) responses to the examination reports, the amendment in the claims was done as a response to overcome such maintainability objection. In all other cases, the amendment in claims (if at all) was to overcome the novelty and/or obviousness objection and was not in response to overcome the objection of maintainability of the voluntarily filed divisional application. It is commendable that the patent office is adapting to the new rules, and that is apparent from the change in the practice at the Indian Patent Office. Since the implementation of the revised rules, the objection that the claims of divisional application are not derived from the parent claims appeared in not more than 10% of the examination reports issued during the last 9 months by the Indian Patent Office. The cherry on the cake is that the percentage of such cases is dwindling fast.

Authors: Manisha Singh and Gaurav Arora

First Published by: Lexology here