A Division Bench of the Delhi High Court has brought much-required clarity on filing of divisional applications in India, which at least two different single judge benches of the same court had disagreed upon previously.
Divisional applications are governed by Section 16 of the Patents Act, 1970, which states thus:
“16 (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.”
A divisional application can be filed based on a plurality of inventions. However, there was a lack of clarity as to whether plurality of invention is to be determined by the claims only, or whether plurality can also be determined from the specification of the application. Contrary views in this regard were held by two Single Judge Benches of the Delhi High Court in Boehringer Ingelheim International GMBH vs. The Controller of Patents (2022 SCC OnLine Del 3777), and Syngenta Limited vs. Controller of Patents and Designs.
To briefly summarise, Boehringer, which has been discussed here (https://www.obhanandassociates.com/blog/divisional-applications-and-plurality-of-invention-in-india/), the High Court held that the plurality of invention was to be determined based on the claims of parent application, both when the divisional application is filed to remedy an objection raised by the Indian Patent Office or suo moto.
In Syngenta, the court concluded that under Section 16(1), the requirement of the claims of the complete specification relating to more than one invention applies only to the case where the Divisional Application is filed to remedy an objection raised by the Controller and would not apply where the Divisional Application is filed suo moto by the applicant. Further, the Court held that Section 16(1) does not require the plurality of inventions to form part of the claims in the parent application. The Court also observed that Section 16(1) permits filing of divisional application even in respect of an invention that is disclosed in a provisional specification, which does not include any claims.
Clarifications from the Division Bench
Its contradictory opinion (from the earlier decision of a different judge of the Delhi High Court in Boehringer) prompted the Single Judge in Syngenta to refer two questions to a Division (2-Judge) Bench
(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 order of the Division Bench, dated 13 October 2023 in C.A. (COMM.IPD-PAT) 471/2022, highlights the following:
1. Under Section 16(1), there are two circumstances under which a divisional application can be filed, as divided in the provision by the word “or”. Therefore, the question pertaining to filing Divisional Application either suo moto by the applicant or while meeting an objection raised by the Controller, would be answered on identical lines.
2. Section 16(1) enables the filing of a further application in respect of an invention, provided it is disclosed in the provisional or complete specification already filed. There is no justification to restrict the filing of a Divisional Application only to when the plurality of invention is found in the claims. The expression “disclosed in the provisional or complete specification” can neither be ignored nor discarded. The law explicitly provides that the plurality of invention must be identifiable from the original claims, despite the possibility of restricting its scope.
3. A provisional application need not consist of claims, which is clear from the Manual of Patent Office Practice and Procedure, which states “Claims may not be included on the Provisional Specification as the purpose of filing a Provisional Specification is to claim a priority date”. If Section 16(1) is interpreted as done in Boehringer, it would lead to a situation where no divisional application could be possibly filed when only a provisional specification has been submitted.
4. The latter part of Section 16(1) does not employ the expression “disclosed and claimed” or “claimed”. The provision only states “disclosed in the provisional or complete specification”, Thus, there is no justification to hold that the plural invention must be found in the claims. If such a view is taken it would result in rewriting the provision itself.
5. Irrespective of whether the Application is filed by the applicant suo moto or to remedy an objection raised by the Controller, the divisional application could be maintained in either situation, subject to the plurality of invention being evidenced from the disclosures made in either the provisional or the complete specification.
6. On the point of “what is not claimed is disclaimed”, the Court agreed with the submission of the intervener that while the doctrine may be relevant for infringement analysis, it has no application to the subject of divisional filing and claim drafting. Thus, there is no justification to impute the principle of “what is not claimed is disclaimed” for discerning the scope of Section 16, especially as Section 16 clearly requires plurality of invention to be gathered from disclosures made either in the provisional or the complete specification.
7. In a further aspect, referring to Koninklijke Philips Electronics NV v. Nintendo of Europe GmbH  EWHC 1959 (Pat), the Court held that divisional application can even be granted having a broader scope than the parent application.
With this division bench decision, the decision in Boehringer stands overruled. The present position with regard to divisional applications is that they are maintainable either in a suo moto filing, or in response to an objection of plurality of inventions by the Controller, so long as the plurality of inventions is demonstrable from disclosures made in either the provisional or the complete specification.