BASF SE vs. Deputy Controller: Madras High Court addressing Timing and Transparency in Patent Filings

The patent ecosystem is as much about safeguarding ingenuity as it is about navigating legal frameworks. The confluence of procedural rigor and the aspirations of innovation have often created defining moments in patent jurisprudence. In a recent judgment delivered in the case of BASF SE vs. The Deputy Controller of Patents and Design (1), the Hon’ble Madras High Court exemplified how the law can evolve to address procedural complexities while upholding the principles of natural justice and fairness. 

Facts of the case

The dispute stemmed from BASF SE’s divisional patent application (201945034726), filed under Section 16 of the Patents Act, 1970. As per Section 16, a divisional application  can be filed by an Applicant either suo moto or to address an objection relating to plurality of inventions disclosed in the parent application. However, the divisional application must be filed before the grant of the parent application.

In this case, BASF SE filed a divisional application on the same day when a patent was granted in respect of the parent application. The Controller rejected the divisional application on the ground that it had been filed after the grant of its parent application. This rejection raised critical questions regarding procedural interpretation and practical feasibility.

The challenge BASF SE encountered was emblematic of a procedural gray. They contended that it was impossible for the appellant to know the exact timing when the patent was granted in its favour.

Furthermore, it was accentuated that the rejection was based, in part, on the ground that the claims lacked distinctiveness. However, the objection of lack of distinctiveness had not been raised in the hearing notice issued during prosecution of the divisional application. This lack of prior communication deprived BASF SE of the opportunity to address or clarify the matter in respect of this ground of rejection. The rejection was not just a procedural roadblock, but a legal labyrinth riddled with questions about fairness and transparency.

Ratio decidendi

The Hon’ble Court approached the case with a balanced perspective, addressing the procedural and equitable dimensions of the dispute. Considering the fact that it was not possible for the Applicant to know the exact timing of grant, the Hon’ble Court expounded that the refusal order was unreasoned and passed by non-application of mind, thus, liable to be quashed.

Accordingly, the Hon’ble Court set aside the impugned order and directed reconsideration of the divisional application. It mandated a fresh examination of the divisional application within six months, thus ensuring a timely resolution, and assignment of a different Controller to oversee the process, thereby safeguarding impartiality.

Conclusion

This decision not only provided BASF SE with an opportunity to pursue its divisional application but also established a precedent for addressing procedural ambiguities constructively. Thus, the judgement underscores that procedural rules, while necessary, must not trump equitable treatment of Applicants—especially in cases involving ambiguous and uncontrollable circumstances.

This judgement reinforces the importance of meticulous planning and proactive compliance with procedural requirements, particularly when filing divisional applications. Equally, it highlights the importance of pursuing recourse when procedural ambiguities arise, as such challenges can lead to systemic clarifications that benefit the broader ecosystem.

The judgment exemplifies how the patent system can evolve to address the needs of innovators without compromising its procedural integrity. By adopting a pragmatic approach to the timing issue and reinforcing the principles of natural justice, the Hon’ble Court demonstrated its commitment to fostering an applicant-friendly environment that supports innovation.

Reference:

1. BASF SE vs The Deputy Controller of Patents and Designs C.M.A.(PT) No.38 of 2024