The patent applications arising from the PCT national phase route are subjected to the rigours of examination by the examiners at the national patent office. The private value of every patent depends on the number of claims used at the filing stage. The patentee normally seeks a grant of one patent for all claims filled at the first instance. The restriction requirements by examiners to divide an application’s claims into separate applications are common in all patent jurisdictions. The unity of the invention in one patent is a decisive determinant in dividing any application.
This division of a patent application is clinical surgery of the parent application to sift multiple inventions, particularly common in biotechnology and pharmaceuticals. But Suo moto division of patent application by the applicant when the examiner insists on narrowing down the claims is an exception where the applicant accepts to get the patent by narrowing down claims and seeks division of the remaining claims. If the divisional is granted with a broader scope than the parent, then the patentee would be successful in adding private value to his pioneer patent application granted with a narrow scope.
Division of an Application: Myths and Reality
It is a well-established myth in the minds of the prosecutors of the parent application that examiners’ objections relating to the division of application are arbitrary, and it is not based on the best patent practices. In reality, the examiner is guided by the best-established rules of the patent law supported by robust statuary provisions that mandate the examiner to seek division of the patent application where he finds that the patentee seeks to claim multiple inventions in one application.
The Patent law also permits the applicant to Suo motto seek division of an application. This division prompted by the patentee is seen as a strategic decision to enhance the private value of a patent in the emerging fields of technology like biotechnology and molecular sciences. It is common to find that the number of claims at filing may not reflect the true private value of a patent, as the number of claims at the time of filing may differ from the number of claims at the time of grant. The patentee normally resists this division, perhaps to save the process of resetting the clock of examination, involving additional time and more expenses.
However, where the patentee has a legitimate interest in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent, he may seek the Suo motto division after accepting the offer of the examiner to narrow down the claims found acceptable for grant. The patentee, in such cases, clearly realises that the use of the number of claims at filing is not a proxy for the private value of a patent per se. The private value of a patent normally depends on the number of claims at the time of patent grant. The number of claims at the time of filing does reflect an applicant’s expectation of future private value in the patent, and in order not to give up scope to which the patentee is entitled, a divisional application is filed.
This divisional application would be examined as a substantive application, and there is a fair chance that such a divisional patent application receives a patent with a broader scope than the parent. If that happens, then the patentee will be successful in adding private value to the already granted patent with a narrow scope.
Division vs Add Matter
The question of ascertaining the suo motto divisional applicational with added matter is quite intriguing, and adopting a legally correct approach to examination finds much precedence in India and other jurisdictions. For instance, in Syngenta Limited v. Controller of Patents and Designs (471/2022), when suo moto divisional of patent application was denied by the patent office, court intervention was sought by the applicants for clear interpretation of section 16. In this case, a single Judge doubting the correctness of the view expressed in Boehringer Ingelheim International GMBH vs The Controller of Patents has referred the following questions for consideration of the Division Bench of Delhi High Court:
“(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 applicant suo moto files the Divisional Application, and not based on 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?”
In their decision dated 10 October 2023, the Division Bench found the observation of the High Court of Justice Chancery Division Patents Court in Koninklijke Philips Electronics NV v. Nintendo of Europe GmbH [2014] EWHC 1959 (Pat). The case, as stated below, is acceptable in the context of the Indian Patent Act.
“28. Proceeding then to explain the objectives sought to be achieved by permitting the patentee to apply for division, the High 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. While prosecuting the patent, 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 winning the point will require many more months or even years of proceedings and possibly appeals. This is true in both the EPO and UKIPO. However, the patentee may want to obtain an early grant in the meantime because a competitor has launched an infringing competitive product. The infringing product may be 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 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 a 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 the scope to which the patentee is entitled, a divisional application is filed. If the Divisional is granted a broader scope than the parent, the patentee’s stance will be entirely vindicated.”
The aforesaid position would also commend acceptance in the context of our Act also.” [Emphasis added]
When the court made this observation, it set clear indications for future divisional applications to the extent that such an application can even be granted having a broader scope than the parent application as referred to in the Koninklijke case. However, the applicant will not be entitled to a double patent for the same invention. This means that the legitimate interest of the patentee in obtaining a divisional patent with claims broader than but encompassing the scope of a parent patent can be protected. In other words, the patent office will not be justified in denying suo moto the division of patent application if the applicant is able to differentiate the two inventions. In any case, a divisional application will be examined for added matter with reference to the patent specification, whether provisional or complete. For the purpose of different inventions, the applicant can rely on the disclosures in the complete specifications accompanying the claims in the parent application.
Suo moto vs Controller Driven Division?
The Division Bench in the Syngenta case ruled that no distinction exists between suo moto, or the Controller-driven division of an application, as section 16 does not appear to warrant such distinction as being carved out in this case. In both situations, the determining fact for maintainability of the division is subjected to the plurality of inventions evidenced by the disclosures made in either the provisional or the complete specification. The operative para of the ruling reads:
“ 25. 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. 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.”
Conclusion
The examiner normally resists Suo moto division of application under section 16. As several suo moto divisional applications were denied by the patent office, court intervention was sought by the applicants for a clear interpretation of section 16. After the Syngenta ruling, this position will change. In this case, the Delhi High Court recognised the patentee’s legitimate right to seek a grant of a divisional patent with claims that are broader than but encompass the scope of a parent patent. In other words, if the Controller insists on narrowing down the claims of the parent application, the applicant gets an opportunity to divide the application Suo moto to protect his legitimate right to add value to an already granted patent. This ruling, therefore, clears the path for suo moto division of the application subject to the plurality of distinct inventions evidenced by the disclosures made in either the provisional or the complete specification.
However, this opportunity for division does not mean that the patentee can add a new subject matter not disclosed in the specification. Expert advice may be useful when an applicant seeks to cover the distinct invention covered by the specification but not claimed, given the objections raised by the examiner. Such a suo moto division of a patent application can effectively enhance the private value of an originally granted patent.
Author: DPS Parmar
First Published By: AsiaLaw here