LexOrbis

The Evolving Divisional Patent Filing Trends In India

Recently on July 26, 2023, the Delhi High Court passed a detailed order analysing the do’s and don’ts of filing a divisional application in Syngenta Limited vs. Controller of Patents and Designs. Before diving into the details of the case and the takeaway from this order, it is pertinent to look at the recent orders wherein divisional applications have been discussed in detail. Each of these orders comprise critical details that raise debates over how the practice of divisional patent filing is constantly evolving in India.

A patent application must relate to a single invention and be based on a single inventive concept. This criterion is taken up very seriously while considering a patent application and an objection on “lack of unity of invention” is raised in case the application relates to more than one invention. The question of filing a divisional application arises in cases where there is a plurality of invention. In other words, when a patent application has more than one invention not related to a single invention, it is required that the application is divided such that a single application discloses a single invention.

The Indian Patent Act in Section 16 lists the “Power of Controller to make orders respecting the division of application”. Over the years, this section has been interpreted in various ways. This has brought up various decisions/orders and in turn case laws for supporting the filing of divisional applications.

According to Section 16, a divisional application can be filed in case of a plurality of invention:

  1. by the applicant suo moto
  2. by the applicant in view of an objection raised by the Controller
  3. if the claims of the divisional are present in the as-filed parent application
  4. If the claims of the divisional form a part of the original specification

The first case in this discussion is ESCO Corporation v. Controller of Patents and Designs, New Delhi, for which the appeal was filed at the IPAB and the appellate board allowed the appeal.

Facts of the case:

  • 4702/DELNP/2005 is the first/ parent application and 8094/DELNP/2008 is the second/ divisional application.
  • The parent application (4702/DELNP/2005) was filed with 56 claims, where claims 1-46 related to a “Wear assembly”, claims 41-52 related to a “Wear member” and claims 52-56 related to “a method of attaching a wear member to a support branch”.
  • There were several amendments made to the claims and finally the earlier claims were replaced with 34 claims where claims 1-14 related to “A wear assembly”, claims 15-19 related to “a method”, claims 20-28 related to “a lock”, claims 29-31 related to “a wedge” and 32-34 related to “a wear member”.
  • Subsequently, in the FER an objection was raised stating that “claims 20-34 are inconsistent to claim 1. In view of the plurality of independent claims the nature of the invention is not fairly ascertained in the specification”.
  • The applicant then filed a divisional application 8094/DELNP/2008 with claims 20-34.
  • Thereafter an objection was raised in the FER stating that “Claims 13 to 15 are not in accordance with section 16(3) of Patents Act 1970”.
  • Claims 13-15 related to “A wear member” of claims 32-34 of the amended claim set of the parent application. In response, the Applicant amended the claim set such that only claims 13-15 were retained as claims 1-3 in the current application.
  • Thereby the application was refused under section 16(1) stating that claims 1-3 did not relate to an invention distinct from claims in the parent application since the wear member was already a feature of the wear assembly claimed in the parent application. Hence, the divisional application was illicit.

IPAB’s Decision:

IPAB allowed the appeal by stating in para 17 that “A logical assessment of the parent application reveals that it was a fit case for allowing all the claims 1-34 in the same application, with suitable amendments, as they relate to a single inventive concept category. But based upon the objection of the Controller, the appellant has moved and filed this divisional application with the set of claims held to be out of the scope of the principal claim. We notice that it won’t be a case of ‘double patenting’ once this divisional application is allowed“.

The next important case in this category is Boehringer Ingelheim vs. The Controller of Patents where the appeal was rejected by the honourable High Court at New Delhi.

Facts of the case:

  • The applicant had filed an application with 18 claims.
  • In view of the FER, the applicant had filed a response to the FER along with an amended claim set with 3 claims on March 24, 2014.
  • Thereafter, on March 20, 2015, and February 18, 2016, two Form-13 were filed by the Applicant filing two further (voluntary) amendments. In the year 2015, the Applicant sought to claim, claims 1-11, relating to a medicament combination of a DIPP IV inhibitor with metformin and in the year 2016, the Applicant sought to amend claims 1-11 to now claim, claims 1-15, relating to a medicament combination of a DIPP IV inhibitor with telmisartan.
  • On 5th July 2017, a hearing notice was issued based on the claims filed on March 24, 2014. The hearing notice rejected the amendments filed in 2015 and 2016, as amendments carried out in claims were beyond the scope of claims on record before the amendments.
  • The hearing was held in August 2017 where the objections were addressed by the applicant and subsequently, the Applicant filed a divisional application on September 4, 2017, together with claims 1 to 11 filed in 2015 and Claims 1 to 15 filed in 2016.
  • The Controller issued a decision for refusal of the present application, stating that the scope of protection of originally filed claims, i.e. use of DPP IV inhibitor of formula I or formula II alone or in combination with other active substances, cannot be extended to the protection of a medicament combination of a DIPP IV inhibitor with metformin/telmisartan as such change in contents of amended claims does not wholly fall within the scope of originally filed claims. Further said amendments cannot be considered to be done by way of disclaimer, correction, clarification or explanation as there is a clear change in the category of claims wherein “use claims” were amended to “product claims”.
  • Further, in view of the divisional filed, FE R was issued, and the applicant addressed the objection. Thereafter, a pre-grant opposition was filed and a hearing notice was issued. After filing all the required submissions, the application was refused stating that the division itself could not have been permitted as the amendments were already examined and refused in the parent application, and the same claims cannot be allowed in another application.

High Court’s Decision:

The High Court refused the appeal by stating that a divisional application in the present case cannot be filed since there was no “plurality of inventions” in the parent application. Further, the original ‘DIPP IV inhibitor’ arising out of a Markush formula, in various permutations and combinations describing its use and method for treatment, which is only mentioned in the examples in the specification, cannot be permitted to be claimed as separate product Claims in a divisional application, as there were no product Claims in the parent application. The claims in the parent application only related to method or use claims whereas, the claims in the divisional concern “products” i.e., medicaments or their combinations. Once the product claims were not sought in the claims of the original application and were only disclosed in the description, the products ought to be treated as “disclaimed”. Thus, the parent application cannot be interpreted to have included a “plurality of inventions”, i.e., completely new product claims, patentable by way of a divisional application.

In the most recent case of Syngenta Limited vs. Controller of Patents and Designs, both the above cases were referred to. In this case, a divisional application 7059/DELNP/2011 was filed from a parent application 6114/DELNP/2005. The divisional application 7059/DELNP/2011 was refused by the Controller.

An appeal was filed at the High Court which challenged the impugned order by the Controller, which had mentioned “whether the application falls within Sections 16 and 2(1)(ja) or not”. Further “The applicant replied and distinct all prior art D1 to D9 from the present invention to meet the requirements of Section 2(1)ja of the Act. Section 16 shall be interpreted in such a manner to avoid any inconsistency uncertainty and friction in the system and if the interpretation as suggested by the agent for the applicant is applied it would allow the applicant to enjoy unfettered time limits to put his application in order as opposed to the provisions of section21(1) of the Act.”

Page 10 of the impugned order mentions that “A careful reading of section 16 in conjunction with section 7 and Section 10(5) revealed that this heading implies that even if the applicant files an application suo moto which is purportedly an application diverted out of another application. The Controller is under obligation to see whether the parent application from which the impugned application has been divided truly comprises of plurality of inventive concepts. If not, there is no reason that the Controller would exercise his power to divide the application. Section 16(3) empowers the Controller to ensure that the claims of the parent and divisional application do not consist of claims of the same scope, i.e., the Controller is bound to see that the divisional application must not claim the same claims of the parent application.”

“Therefore, in order to become eligible as a divisional application u/s 16, it is primarily essential that the parent application out of which the divisional application is filed should disclose more than one invention and not just the same invention.”

Finally, the Controller refused the divisional application by stating that “In the present case, there is no objection on plurality or under Section 10(5) of the Act in the first examination report of the parent application. The applicant has also changed the nature of the claimed invention in the divisional application after filing amended claims which are neither part of the parent application nor of divisional application. Thus, if the applicant desires to file a divisional application for his invention, disclosure of more than one….. in the parent application is essential. The parent application, which was granted, did not contain any claims relating to a plurality of distinct inventions. Interestingly, no objection relating to the plurality of distinct inventions was raised in the First Examination Report (FER) with respect to the parent application. Instead, without complying with the requirements contained in the FER, the applicant filed the instant application as a divisional application on 15th September 2011. Having considered all the circumstances….., I hereby refuse to consider the instant application No. 7059/DELNP/2011 as a divisional application u/s 16 of the Act as the same has not been filed in accordance with the provisions of the Patents Act“.

The applicant’s counsel challenged the order by the Controller stating that:

(i) Contrary to the decision by the Controller, section 16(1) envisages two circumstances, in which an applicant could file a divisional application, after having filed a parent application. The first is where the applicant does so suo moto, as is contemplated from the words “if he so desires“. The counsel further states that “it is only where the divisional application is based on an objection raised by the Controller that the objection has to be on the ground that the claims of the complete specification in the parent application relate to more than one invention“.

(ii) There is an error in the observation that the parent application did not contain any claims relating to the plurality of inventions.

The counsel for the Controller General of Patents relied on the cases discussed above namely Boehringer Ingelheim International GMBH v. The Controller of Patents for “that a divisional application under Section 16 of the Act, has to be an application which arises from a parent application disclosing a “plurality of inventions”. In Section 16(1), the phrase “the claims of the complete specification relate to more than one invention” makes this position clear“, ESCO Corporation v. Controller of Patents & Designs for “that a patent application can only be divided, if it claims more than ‘one invention”……………….and concludes that “if there is no objection on the ground of ‘plurality of distinct inventions’ …., no divisional application is allowable“.

The argument was mostly based on “”plurality of inventions” should clearly exist in the claims of the original parent application and within the scope of the specification of the parent application”. However, it was then mentioned that “……..if the invention 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, in respect of alleged inventions“. Further “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“”.

The counsel of Controller General of Patents further stated Section 59 and mentioned that “Sec 59 also makes it clear that amendments beyond the scope of the specification and claims would not be permissible and referred to Nippon A&L Inc. v. The Controller of Patents”

Analysis by the High Court

  • The court regretfully expressed the inability to agree with the view expressed in the judgment in Boehringer Ingelheim.

  • If the interpretation in Boehringer Ingelheim is to be accepted, then the provision of Section 16(1) is required to be rewritten as

    A person who has made an application ……. raised by the Controller, on the ground that the claims of the complete specification …. invention disclosed in the claims already filed in respect of the first mentioned application.

  • The major changes in the above paragraph, when compared to the present Section 16(1), are the addition of a comma after the words “raised by the Controller” and the replacement of the words “provisional or complete specification” with the word “claims“.
  • The High Court envisaged two circumstances under Section 16(1) in which a divisional application may be filed, namely,
    1. A Divisional Application may be filed by the applicant of the parent application if he so desires
    2. where the applicant seeks to remedy an objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention
  • The court mentioned that “if the applicant is seeking to file a Divisional Application to remedy of 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 related 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 further held that the above interpretation is in line with Article 4(G) of the Paris Convention. Article 4(G) also envisages two distinct circumstances in which a divisional application may be filed. Article 4(G)(1) envisages such an application being filed on the FER revealing that the original application contains more than one invention. Article 4(G)(2) envisages suo moto filing of a Divisional Application by the parent applicant.
  • The court then referred to the Manual of the Patent Office Practice and Procedure in Clause 05.02.02 mentions that “Claims may not be included in the Provisional Specification” (in relation to Section 16(1)) and interprets that Section 16(1) of the Patents Act permits a divisional application to be filed even in respect of an invention disclosed in the provisional specification filed in respect of the parent application. If the requirement of plurality of inventions being claimed in the parent application were to apply, therefore, no divisional application could ever be filed where the parent application contains only provisional specifications, as provisional specifications are not to include claims. Since Section 16(1) permits divisional applications to be filed in respect of inventions disclosed in provisional or complete specifications in the parent application, the specification of the plurality of inventions in the claim can never be imperative.
  • Finally, the court expressed the requirement of revisitation in Boehringer Ingelheim. Further, for the present case Syngenta Limited vs. Controller of Patents and Designs, the court refers the following questions for consideration by a Division Bench of this Court to be constituted by and subject to orders of the Chief Justice:

(i) Does the requirement of a plurality of inventions being contained in the parent application, for a Divisional Application to be maintainable, apply even where the Divisional Application is filed by the applicant suo moto, 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?

After looking at the various cases for reference, clear guideline for filing divisional applications are the need of the hour. However, it is worth noticing that the court posing questions and requesting consideration by a Division Bench will surely bring some clarity to the provision of Section 16(1) in the future.