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Revisiting Divisional Patent Applications: The Plurality of Inventions Debate in India

Divyendu Verma

In India, divisional applications can be filed under certain conditions, and these conditions are primarily governed by Section 16 of the Indian Patents Act, 1970.

Section 16 provides:

16: Power of Controller to make orders respecting division of application:

(1) 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.

(2). 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.

(3). 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.

Here are the key points related to filing divisional patent applications in India:

• Unity of Invention: The main condition for filing a divisional application in India is that the parent application should relate to more than one invention. If the claims in the original application relate to multiple inventions, the applicant may be required to restrict the application to a single invention. In such cases, the applicant can file one or more divisional applications to cover the remaining inventions disclosed in the original application.
• Timely Filing: Divisional applications should be filed during the pendency of the original (parent) application. Once the original application has been granted or refused, divisional applications cannot be filed.
• Disclosure of the Invention: The subject matter of the divisional application should have been disclosed in the original (parent) application. The divisional application cannot introduce new subject matter.
• No Double Patenting: The divisional application should not result in double patenting with the original application. In other words, the same invention cannot be claimed in both the parent and divisional applications.
• Request for Examination: A divisional application must follow the examination process, which includes filing a separate request for examination within 6 months from the date of filing of Divisional Application.
• Rights and Priority: The divisional application is considered an independent application with its own set of rights and priority based on the filing date of the original application.
• Term of Protection: The term of protection of a divisional patent is 20 years from the filing date of the original application or 20 years from the priority date, whichever is earlier.

Filing divisional applications is a strategic approach to protect different inventions disclosed in a single original application, ensuring that each invention is examined and protected separately. It allows applicants to maximize the value of their intellectual property.

The above information was in practice until 2022 when a single bench judge of the Delhi High Court in Boehringer Ingelheim International GMBH v. The Controller of Patents, 2022 SCC Online Del 3777, held that a divisional application would not be maintainable if it does not contain a plurality of inventions within the claims of the parent application. The single judge also emphasized that allowing divisional applications when multiple inventions are not claimed in the original application would contradict the fundamental principle of patent law, which is “what is not claimed is disclaimed”.

However, another single bench judge of the Delhi High Court disagreed with the above judgement in the matter of – Syngenta Limited v. The Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 471/2022, referring the matter to the division bench (two judge bench) with two questions:

• Is the condition of plurality of inventions in the parent application,[sic] applicable even where the divisional application is filed by the applicant suo moto (sua sponte), and not based on any objection raised by the Controller?
• Assuming that the requirement of plurality is necessary for a divisional application to be maintainable, does the plurality have to be reflected in the claims in the parent application or is it sufficient if the plurality is reflected in complete specification?

At the time of the referral, the single bench judge of the Delhi High Court in the Syngenta case made an observation and noted that the Boehringer case essentially reinterprets Section 16 of the Patents Act. 1970 by removing the phrase “disclosed in the provisional or complete specification already filed” and replacing it with “claims,” which cannot be legally justified. The Single bench judge also pointed out that the question of whether a plurality of inventions is encompassed in the original claim must be raised by the applicant suo moto.

The Division Bench (2 Judge Bench) of the Delhi High Court in the case of Syngenta Limited v. The Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 471/2022 (Judgement dated 13 October 2023), included the following points[A1] [A2] :

1. The Division Bench first emphasized that filing a divisional application, whether initiated by the Applicant voluntarily or in response to an objection by the Controller, should follow the same criteria. This stance contradicted the perspective expressed by the Single Judge in the Syngenta case, which suggested treating these two categories differently, thus rejecting the observation of the Single Judge in the Syngenta case.
2. The Division Bench, secondly, pointed out that there seems to be no valid reason to confine the filing of a divisional application solely to scenarios where the plurality of inventions is explicitly mentioned in the claims. Such an interpretation contradicts the clear language of Section 16 of the Act, which references inventions "disclosed in the provisional or complete specification." The Bench reasoned that, in the case of a provisional filing, claims may not yet exist, and thus, adhering to the Boehringer rationale would imply that no divisional application could be submitted when a provisional specification is involved. The Bench also clarified that the principle of “what is not claimed is disclaimed”.[A3] [A4]  While this principle holds significant weight in the realm of claim drafting, the Bench aptly noted its comparatively diminished relevance in the context of infringement analysis. This insightful clarification provides valuable guidance, acknowledging the pivotal role of claim drafting in determining the scope of protection but recognizing its distinct applicability when assessing infringement scenarios.

The Bench accordingly overruled the Boehringer decision and established that the maintenance of a divisional application is permissible in either of the two circumstances: (i) voluntary divisional filing by the applicant, or (ii) filing of divisional application in response to an objection raised by the Controller regarding plurality of inventions. This allowance, however, is contingent on the condition that the existence of multiple inventions can be substantiated based on the disclosures contained within either the provisional or the complete specification.