INDIA: DELHI HIGH COURT RULING ON DIVISIONAL APPLICATION
The Delhi High Court recently, in its judgement dated July 20, 2022, refused a patent appeal filed by Boehringer Ingelheim International GMBH (hereinafter referred to as the Applicant), on the grounds that the claims of the divisional application were beyond the scope of the claims of the parent application, even though the invention sought to be pursued in the divisional application was disclosed in the complete specification of the original/parent application.
On March 25, 2022, the Indian Patent Office refused the divisional application (bearing number IN201718031279) on the grounds that the divisional application did not constitute a valid divisional application since similar claims had already been proffered by the applicant during the prosecution of the parent application and were disallowed by the Patent Office under Section 59 of the Patents Act. In the refusal order, the Controller observed that the claim-set of the impugned divisional application was already examined and refused in the parent application and noted that the refusal of the parent application is no criteria to pursue a divisional application with similar amendments.
An appeal arising out of the above-mentioned refusal order was filed by the Applicant before the Delhi High Court. In its decision, the Hon’ble Court examined the term “more than one invention”/ “plurality of inventions” under Section 16 of the Indian Patents Act and observed that the claims in the parent application of the divisional application only relate to the method or use claims whereas, the claims in the divisional application claimed products i.e. medicaments or their combinations.
The Hon’ble Court noted that ‘the invention resides in the claims’, therefore 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 view of the fundamental rule of patent law i.e., ‘what is not claimed is disclaimed’. The Hon’ble Court held that since the product (medicament combination) claims were not pursued in the original claims of the parent application though being disclosed in the content of the complete specification, the products ought to be treated as having been disclaimed.
Thus, the Hon’ble Court dismissed the appeal arising from the refused divisional application while relying on the judicial precedent laid down by the erstwhile Intellectual Property Appellate Board (IPAB)in Esco Corporation Vs Controller of Patents & Designs [OA/66/2020/PT/DEL] and held that the claims being pursued in a divisional application must not only be ‘disclosed’ in the parent application but also must form a part of the originally filed ‘claims’ in the parent application.
The Hon’ble Court has echoed the view taken by the IPAB in UCB PHARMA S.A. v. THE CONTROLLER GENERAL OF PATENTS & DESIGNS & THE ASSISTANT CONTROLLER OF PATENTS & DESIGNS [OA/3/2015/PT/MUM] and LG ELECTRONICS, INC V. CONTROLLER OF PATENTS & DESIGNS [OA/6/2010/PT/KOL].
Some noteworthy observations made in this judgement that may be useful while taking a decision on whether or not to file a divisional application in the future:
1. Invention is defined in the claims. Therefore, ‘unity of invention’/‘plurality of inventions’ and whether the claims form a ‘single inventive concept’ has to be gleaned from the reading of the claims.
2. If the invention is not contained in the claims of the parent application, the divisional application cannot be permitted on the basis of disclosure made in the specification of the parent application.
3. The application is to be divided only on the ground of plurality of invention envisaged under S. 16 of the Indian Patent Act. If any claim is held to be non-patentable due to any provisions of the law such as the requirements under S. 3 of the Indian Patent Act or otherwise, it is improper to file a divisional application for such a claim.
4. The parent and divisional application cannot have duplicate set of claims.
5. For divisional of an application, the primary requirement is that an application should exist. Therefore no divisional can be filed, if the parent application is either ‘deemed to be abandoned’, ‘withdrawn’ or ‘refused’. However, once the divisional application is filed, no such subsequent action will have any bearing on that divisional application.
It will be interesting to see if this matter is appealed before the Division bench and how it impacts the approach of the Examiners at the Patent office. We will be closely monitoring and will advise you as and when there are further updates.
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