After the establishment of the IP Division, the Delhi High Court has been clarifying different aspects of patent law through its lucid and well-written judgments. In a case decided on 12th July 2022, the Court has clarified and succinctly put together principles pertaining to the filing of divisional patent applications. While rejecting the validity of a divisional application including product claims pertaining to DPP IV inhibitors because the parent application included only use and process claims, the Court stated as follows:
“30. A perusal of these conditions as stipulated under Section 10 shows that the title indicates the subject matter of the invention. The content of the specification describes the invention. The complete specification also describes the procedures, processes, and methods, including the best methods. But what is crucial to note, is the fact that the invention itself is defined in the claims. While such claims do have to be based on the disclosure in the specification, however even if a person does not read the complete specification and wishes to identify the invention, the place to look for it is in the ‘Claims’. The Invention thus resides in the Claims. Accordingly, “unity of the invention”/ “plurality of inventions” and whether they form a “single inventive concept” has to be gleaned from a reading of the claims. This position has been examined and held so by the IPAB as well in ESCO Corporation v. Controller of Patents & Designs [OA/66/2020/PT/DEL, decided on 27th October 2020], where the IPAB observed:
“10. Therefore, looking at the provisions of law and the settled practices, we reach the following conclusions that a patent application can only be divided, if it claims more than ‘one invention’. Now the question therefore is how “one invention” is defined. We look at the provisions of “unity of invention” as provided in section 10(5) of the Patents Act, 1970. It says ‘The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept”. Means if any specification claims either a single invention or a group of invention linked so as to form a single inventive concept, the requirement of “unity of invention” is satisfied. Hence, if there is no objection on the ground of ‘plurality of distinct inventions’ means the claims of the complete specification, contains either a single invention or a group of inventions linked so as to form a single inventive concept and in such a scenario, no divisional application is allowable.”
- Using this understanding of how an invention is ascertained in a patent application, it is clear that under Section 16 of the Act, the “plurality of inventions” should clearly exist in the claims of the original parent application and within the scope of the specification of the parent application. Therefore, under Section 16, the question of whether the claims of the complete specification relate to more than invention i.e., a “plurality of inventions” has to be seen from the claims of the parent application. Obviously, the claims in turn, have to be based on the disclosure in the specification. However, 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 respect of alleged inventions. If applicants are permitted to file such divisional applications on the basis of disclosure in the complete specification, without such inventions being claimed in parent applications, it would defeat the fundamental rule of patent law i.e., ‘what is not claim is disclaimed’.1 Similarly, Section 59 also makes it clear that amendments beyond the scope of the specification and claims would not be permissible. This is the settled legal position, as also held by this Court in Nippon A&L Inc. v. The Controller of Patents [C.A. (COMM.IMPD-PAT) 11/2022, decided on 5th July, 2022]. Thus, the divisional application would be maintainable only when the claims of the parent application disclose “plurality of inventions”.
- This position of law is also borne out by various decisions of the IPAB. For instance, most recently in ESCO (supra), the IPAB held as under:
“10. Therefore, looking at the provisions of law and the settled practices, we reach the following conclusions that a patent application can only be divided, if it claims more than ‘one invention’. Now the question therefore is how “one invention” is defined. We look at the provisions of “unity of invention” as provided in section 10(5) of the Patents Act, 1970. It says ‘The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept”. Means if any specification claims either a single invention or a group of invention linked so as to form a single inventive concept, the requirement of “unity of invention” is satisfied. Hence, if there is no objection on the ground of ‘plurality of Nippon A&L Inc. v. The Controller of Patents [C.A. (COMM.IMPD-PAT) 11/2022, decided on 5th July, 2022]; Manual of Patent Office Practice and Procedure, published by the Office of the Controller General of Patents, Designs and Trademarks, dated 26th November, 2019.
distinct inventions’ means the claims of the complete specification, contains either a single invention or a group of inventions linked so as to form a single inventive concept and in such a scenario, no divisional application is allowable.
- The issue of divisional applications has drawn much attention in recent past and we have noted different practices adopted by the applicants or by the Patent Office. We, therefore, opine that in the best interest of justice and in order to bring uniformity of practices, the following guiding principle may help to address the issue. Considering the above legal provisions of Indian Patent law, the Manual Of Patent Office Practice and Procedure, the PCT to which India in a member since 1998 and the previous decisions, we are of the view that the following points need be adhered to while dealing with divisional applications:
- Formal Grounds:
14.1 Filing of divisional application ❖ Either by the applicant (suo-moto), if he so desires or ❖ To remedy the objection raised by the Controller on the ground of plurality of invention.
❖ In either case the existence of plurality of invention in the parent application is the sine qua non for a divisional application.
14.2 The claims of divisional application shall have their route in the first mentioned (parent) application. This is true even for divisional to divisional application as well. The routes of subsequent divisional application also should be from the first mentioned application. The divisional application shall not be filed with the same set of claims as the first mentioned application.
14.3 The applications need be divided only on the ground of ‘plurality of invention’ as envisaged under section 16. If any claim is held to be non-patentable due to any other provisions of the law such as the Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:21.07.2022 10:49:18 requirements section 3 or otherwise, it should not be proper for filing a divisional application for such claims.
14.4 For division of an application, the primary requirement is that the application shall exist. Meaning thereby that no divisional application can be filed, if the application is either “deemed to be abandoned” or ‘withdrawn” or “refused”. However, the divisional application once filed, no such subsequent action will have any bearing on that divisional application, which shall continue as substantive application. …
14.7 The complete specification of the divisional application shall not include any matter not in substance disclosed in the complete specification of first mentioned application. The teaching of sub section (2) of section 16 doesn’t refer to the matter disclosed but not claimed. This relates to the fact that since both the applications are given the same date of filing, the latter shall not include any further subject matter which was not disclosed in the first mentioned application. Therefore, the contention that some additional claim(s) can also be allowed, which never formed part of the originally filed claims, is negated as the provisions of law need to be read in totality. A plain reading of sub -section (1) of section 16 reveals that the very ground to accept divisional application is “on the ground that the claims of the complete specification relate to more than one inventions. Sections 10(5) further qualifies “more than one invention” to only such invention or group thereof which cannot be linked to make a single inventive concept.
14.8 At the stage of examination, care should be exercised that merely by the presence of different embodiments in the specification, which are claimed as independent set of claims, it does not necessarily attract the provisions of lack of Unity of invention’. If the unity of invention is not ascertained, the amendement of the claims can overcome the “scope” or “definitiveness” requirements, and this option could well be excercised before hand.”
- This position also finds favour in the IPAB’s decision of LG Electronics, Inc. v. Controller of Patents & Designs [OA/6/2010/PT/KOL, decided on 10th August, 2011]. The said decision reads as under:
“The concept of divisional application in the patent law basically addresses the issues of allowability of protection of multiple inventions disclosed in one patent application, where these multiple inventions do not constitute a single inventive concept. The protection of multiple inventions through divisional application is available in the Patents Act 1970 under the provisions of section 16 and section 10(5) reproduced below….
We agree with the applicants arguments that the applicant can file an application as divisional application of his own before the grant of patent. However Respondent-2 is mandated by the law to ascertain that the divisional application so filed is on account of disclosure of plurality of distinct invention in the parent application. Section 16 pertains to power of the Respondent to make order respecting division of application. Right to file divisional application indeed rest with the applicant but the power to ascertain its allowability is vested with the Respondent. The first essential requirement of this provision is the fact of existence of plurality of invention in the parent application.”
- Even in Milliken (supra) which has been relied upon by the Applicant, the parent application had a plurality of inventions in its claims Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:21.07.2022 10:49:18 which was then moved to the first divisional application and then to the second divisional application.
- In view of the above discussed settled position in law, this Court is clearly of the opinion that a divisional application in the present case cannot be filed since there was no “plurality of inventions” in the parent application. In the present case, the original ‘DPP IV inhibitor’ arising out of a Markush formula, in various permutations and combinations describing its use and method for treatment, which is only mentioned in the examples in the specification, cannot be permitted to be claimed as separate product Claims in a divisional application, as there were no product Claims in the parent application. Clearly, the Claims in the parent application only related to method or use claims whereas, the Claims in the divisional application concern “products” i.e., medicaments or their combinations. Once the product Claims were not sought in the original application and the said products were clearly disclosed in the content of the complete specification, the products ought to be treated as having been disclaimed. Thus, the parent application cannot be interpreted to have included a “plurality of inventions”, i.e., completely new product Claims, patentable by way of a divisional application.”
Citation: Boehringer Ingelheim … vs The Controller Of Patents & Anr., decided by Delhi High Court on 12 July, 2022, available at: https://indiankanoon.org/doc/164938320/?type=print, visited on 11th August, 2022.