Syngenta Limited v. Controller of Patents and Designs (471/2022), Delhi High Court Decision
- A lack of unity objection of the Controller is no longer a requirement for the maintenance of a divisional application;
- Subject matter of a divisional application does not need to be within the scope of the original claims, as long as the divisional claims are supported by the entire specification as originally filed;
- Previous decision in Boehringer Ingelheim v. Controller of Patents and Designs with respect to divisional filing is “overruled”;
- New Delhi High Court also provides guidance to Applicants on the criteria to differentiate “different inventions” which are the basis for maintenance of a divisional application.
Details of the case
The recent Syngenta decision on 13 October 2023 in Delhi High Court (DHC) doubted the correctness of the previous decision from 2022 in Boehringer Ingelheim v. Controller of Patents and Designs, which confirmed the previous practice of the Indian patent office for rejecting divisional applications filed in India.
The Syngenta decision clarifies two important aspects in the requirements for divisional application filing in India:
- The Applicant may on his own initiative, divide a patent application without a lack of unity objection raised during examination; and
- The subject matter of a divisional application can be based on an invention disclosed in the specification, and not limited to the inventions encompassed within the scope of the claims filed in the parent.
Following the Syngenta decision, an Applicant may expect more flexibility in strategizing patent prosecution in India.
No more requirement of lack of unity for divisional applications
The previous Boehringer decision refers to Section 16(1) of the Indian Patents Act and holds that, if the Applicant desires to file a divisional application for his invention, disclosure of more than one invention (plurality of distinct invention) in the parent application is essential. That is to say, it is not possible to maintain a divisional patent application in India unless the claims of the divisional application are directed to a distinct invention having a different inventive concept from what is claimed in the parent application.
The Delhi High Court (DHC) disagrees with the reading of Section 16(1) in the Boehringer decision.
Section 16(1) of the Indian Patents Act reads as follows:
“Section 16 (1)
Power of Controller to make orders respecting division of application
- A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
The Delhi High Court (DHC) emphasizes the intended distinction of two scenarios in Section 16(1) and concluded that the issue of plurality of inventions being embodied in the original claim would only be a restrictive condition if the divisional application is filed based on a lack of unity objection raised by the Controller.
In light of the above comments, Applicants may voluntarily divide a patent application in India without a lack of unity objection being raised during examination.
Subject Matter Of Divisional Application IS Not Limited To What Was Claimed In The Parent
The High Court emphasizes that the Boehringer decision fundamentally reconstructs Section 16 without considering the phrase “disclosed in the provisional or complete specification already filed” and substituting it with the word “claims”. As a result, the Boehringer decision sets out a narrow requirement for the subject matter of the divisional patent applications to be limited to what was claimed in the parent application.
The Syngenta decision clarifies that Section 16(1) does not employ the expression “disclosed and claimed” or “claimed” in the provision, and only speaks of inventions “disclosed in the provisional or complete specification”. In addition, the High Court has made it clear that the precept of “what is not claimed is disclaimed” applies only in the context of infringement and has no application to drafting of claims.
Therefore, following this decision, unclaimed subject matter disclosed in the parent application can now be made the subject matter of one or more divisional patent applications in India, irrespective of whether a lack of unity objection is raised. However, the divisional application must of course still refer to a different invention disclosed in the parent provisional or complete specification already filed.
Question would be, what are the criteria to differentiate “different inventions”.
Criteria To Differentiate “Different Inventions”
The Appellant submits that the only proscription for filing of divisional patent application section 16 introduces is of there being no duplication of claims between the parent and the divisional application. Further, the Appellant cites the decision of Koninklijke Philips Electronics NV v. Nintendo of Europe GmbH ( EWHC 1959), which explains the prohibition against double patenting between the two or more applications for a patent for the same invention having the same priority date, filed by the same applicant or his successor in title.
The Delhi High Court (DHC) accepts the position of the cited decision above and agrees that patentee may have a legitimate interesting in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent.
In view of the above guidance provided, this could mean that the “different inventions” in the context of the maintenance of divisional applications in India would be assessed based on the sole criteria of double patenting.
If this interpretation of the decision of the DHC is correct and followed by the Indian patent office, one could also speculate that it should be possible to file a voluntary divisional patent application for the purpose of keeping the pendency of the application in India, which was not possible previously.
Post Syngenta Decision: Claim Amendments
As discussed above, the High Court commented on the existing standards of “what is not claimed is disclaimed” which has no application to drafting of claims. This could be relevant for not only the filing of divisional patent applications, but also for other claim amendments made during prosecution in India.
If the same standard is read broadly into the context of claim amendments, Applicant may expect loosening restrictions at the Indian patent office for reintroducing claims which were previously cancelled during prosecution back into a pending claim set.
Source: Syngenta Limited v. Controller of Patents and Designs (471/2022), Delhi High Court, published judgement.