Interpretation of Section 16 by Delhi High Court
The article discusses the interpretation of Section 16 of the Patents Act, 1970 given by the Delhi High Court in Syngenta Limited's case, in which the correctness of the view in Boehringer's case was reconsidered.
The provision of Divisional applications and the interpretation of section 16 of the Patent Act, 1970 [the Act] have been a question of debate in India since the ruling of Intellectual Property Appellate Board [IPAB] in the LG Electronics case [OA/6/2010/PT/KOL], which discussed the maintainability of divisional applications. This case established the fundamental criteria for initiating a suo moto divisional patent application, specifying that the claims of the voluntary divisional application must relate to a "distinct invention”.
Subsequently in 2020, IPAB in the ESCO Corporation case [OA/66/2020/PT/DEL], interpreted the Section 16 of the Act to mean, “that the claims of the divisional application must be derived from the claims of the parent application”, and emphasized the legal principle of “what is not claimed is disclaimed”. The decision of the IPAB in the ESCO Corporation case was affirmed by the Hon’ble High Court in its judgment in Boehringer's case [2022 SCC OnLine Del 3777] in 2022.
However, in the recent case of Syngenta Limited versus the Controller of Patents and Designs, C.A (COMM.IPD-PAT) 471/2022, the learned Single Judge of the Hon’ble Delhi High Court expressed doubts about the correctness of the view presented in the case of Boehringer Ingelheim International GMBH vs. The Controller of Patents [2022 SCC OnLine Del 3777] and referred the matter to the Division Bench of the Hon’ble Delhi High Court, who interpreted Section 16 of the Act, differently.
The Appellant, Syngenta Limited, had filed a patent application (6114/DELNP/2005) on December 28, 2005 titled "Agrochemical concentrate comprising an adjuvant and hydrotrope". Subsequently, the Appellant filed a divisional application (7059/DELNP/2011) on September 15, 2011. Thereafter, First Examination Report (FER) was issued by the Indian Patent Office (IPO) on December 27, 2015 to which the Appellant filed a response on March 14, 2016. The Appellant was granted a hearing on February 8, 2017. On October 11, 2017, the impugned order was passed by the Controller, rejecting the grant of the divisional application.
The Deputy Controller, in his order, relied upon the order passed in the Boehringer's case [2022 SCC OnLine Del 3777] in 2022, and refused the Divisional Application. He stated that for an application to be considered as a divisional application under Section 16, it is essential that the parent application include plurality of inventions, and not just the same invention. And as the parent application, in the present case, did not contain any claims relating to plurality of inventions, and no such objection regarding the same was raised in the FER and the Divisional Application was filed voluntarily.
The Appellant preferred an Appeal before the Hon'ble Delhi High Court under Section 117(A) of the Patents Act, 1970 against the impugned order passed by the Deputy Controller of Patents and Designs.
The learned Single Judge of the Hon’ble High Court expressed disagreement with the view expressed in the Boehringer Ingelheim case, which suggests that the requirement of the parent application containing a plurality of inventions applies to both suo moto/voluntary filing and filing in response to objections raised by the Controller. The learned Single Judge observed that the Boehringer case [2022 SCC OnLine Del 3777] essentially reconstructs Section 16 of the Patent Act, 1970 and erases the phrase “disclosed in the provisional or complete specification already filed” and substituting it with the word “claims”. The learned Single Judge opined that the interpretation accorded to Section 16 in Boehringer case [2022 SCC OnLine Del 3777] cannot be countenanced.
Consequently, the learned Single Judge referred two important questions concerning the scope of divisional patent applications under section 16 of the Act :
“(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?”
The Division Bench of the Hon’ble High Court determined that the placement of a comma after the phrase 'if he so desires' is insignificant when considering the clear division created by the word 'or' in Section 16(1). Therefore, the Division Bench held that filing a divisional application, whether initiated by the Applicant Suo moto or in response to a Controller's objection, should be assessed similarly.
Furthermore, the Division Bench emphasized that there is no justification for restricting the filing of a divisional application solely to situations where multiple inventions are found in the claims. Such an interpretation contradicts the explicit language of Section 16 of the Act, which mentions 'disclosed in the provisional or complete specification.' The Bench reasoned that in the case of a provisional filing, claims may not exist, and accepting the Boehringer case’s rationale would effectively prevent the filing of divisional applications when a provisional specification is involved.
The Bench also interpreted the legal principle 'what is not claimed is disclaimed' differently and stated that the principle applies to claim drafting and is more relevant in infringement analysis.
The Bench, in line with this, overruled the ruling in the Boehringer case [2022 SCC OnLine Del 3777]. The Hon’ble Division Bench held that a divisional application can be validly pursued in both scenarios:
[1] when initiated by the applicant Suo moto or
[2] in response to the Controller's objection of plurality of inventions.
The Division Bench clarified that it was crucial that the presence of plurality of inventions is substantiated by the information provided in either the provisional or complete specification.
The Divisional applications play a crucial role in protecting all aspects of the inventions that have been previously disclosed in the parent application and are an important strategical move in the building of patent portfolios for patent applicants. The previous interpretations of the Section 16 of the Act discouraged filing of divisional applications, as the applicants were not able to use the benefit sanctioned by Section 16 of the Act, as the divisional applications could not be entertained unless there was an objection of the “plurality of inventions” by the Controller in the First Examination Report. The current interpretation of the Division Bench is a progressive step in the right direction as it promotes the practical application of Section 16 of the Act and encourages the applicants to pursue divisional applications in India.
The Division Bench has reverted the matter to the Learned Single Judge for further hearing.