Syngenta Limited vs. Controller of Patents – Divisional Application Case Analysis

26th October, 2023 - 6:01 am Categories: News & Updates Patents 0 Comments

FACTS OF THE CASE

The current case involves a challenge to the order issued by the Deputy Controller of Patents and Designs on October 11, 2017, the appeal of which is being brought under Section 117-A of the Patents Act, 1970.

The parent application dated 28 December 2005 was filed to get a patent for an “Agrochemical concentrate comprising an adjuvant and hydrotrope.” the main claim of the parent application, listed the key components of the invention. Notably, it had an adjuvant with an oil base and a hydrotrope that could solubilize the adjuvant in the continuous phase. Three preferred hydrotrope and oil-based adjuvant combinations were fully described in the parent application’s entire requirements.

On September 15, 2011, the appellant started the process of submitting a divisional application based on the parent application. One of the three preferable combinations (c) described in the comprehensive specifications of the parent application constituted the foundation for claim 1 in this divisional application.

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On February 8, 2017, the appellant was given a personal hearing after the Patent Office’s First Examination Report (FER) and the appellant’s response.

The crucial question in the said hearing was whether the divisional application conformed to the Section 16 and 2(1) (ja) of the Patents Act.

The deputy controller rejected the said divisional application, through the interpretation of section 16 to mean that for a divisional application to be valid, the parent application must disclose more than one distinct invention. However,in the present instance, the parent application lacked any claims referring to a plurality of distinct inventions, and the divisional application did not sufficiently address this requirement.

The petitioner then appealed the case to the Delhi High Court in an effort to challenge the controller general’s order. On July 26, 2023, the learned single bench judge issued an order referring the case to a division bench after much thought on the subject.

ISSUE

The question in the current case is whether, in order for the divisional application to be acceptable, Section 16 of the Act requires that the parent application must contain claims for more than one invention.

ANALYSIS

The Deputy Controller’s view, as expressed in the impugned order, was that for an application to be considered a valid divisional application under Section 16, the parent application from which it originates must disclose more than one distinct invention in its claims. This aims to prevent duplication of claims between the parent and divisional applicants.

The Deputy Controller also cited previous IPAB (Intellectual Property Appellate Board) orders such as LG Electronics INC, Korea vs. Controller of Patents & Designs, Kolkata and others, (2011)and Sygenta Participations AG, Switzerland vs. Union of India and Others, 2013 to support this interpretation. In essence, the Deputy Controller concluded that for a divisional application to be valid, the parent application must contain claims related to multiple distinct inventions, and this was not the case in the situation at hand.

The learned single bench judge dwelled on the issue by analyzing section 16 of patent act. He put great significance to the punctuation mark which has been placed after the phrase “if he so desires” and opined if the requirement of claims of the complete specification relating to plurality of inventions were applicable to both contingencies, i.e., Suo moto and to remedy anobjection by the controller, the provision would have been structured differently.

Secondly, he examined Article 4G of the Paris Convention which India is a signatory to, and supported the interpretation that multiple inventions must be explicitly claimed in the parent application as argued by the counsel for controller general. However, the learned judge stated that he did not find Article 4G of the Paris Convention inconsistent with the interpretation allowing divisional applications without needing multiple claims.

Further, the counsel also brought a case of Boehringer Ingelheim International GMBH v. The Controller of Patents, 2022 was also looked into as a well-established precedent. He noted the lines “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.”, and stated that 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.

JUDGMENT AND CONCLUSION

The court’s focus in the interpretation of section 16(1) is on the granting of a divisional application for an invention that is described in a provisional or complete specification. The court concluded that this provision does not restrict the meaning of section 16 to the filing of divisional application only in the case where multiple innovations are mentioned in the claims. The meaning of the word “disclosed in the provisional or complete specification” must be understood because the court vehemently objects to any interpretation that restricts its applicability to claims exclusively.

Further the court agrees that the restrictive interpretation of Section 16(1) in Boehringer Ingelheim would also not be sustained when the provision sof Manual of the Patent Office Practice and Procedure dealing with the contents of a provisional specification in clause 05.02.02 provides that a provisional specification which is tendered to the Controller, may not include any claims at all. Accordingly, this implies that Boehringer Ingelheim was clearly decided incorrectly when it held that the existence of plural inventions must be found in the claims.

Therefore,the court rejects and expresses dissatisfaction with the view put forth in the Boehringer Ingelheim case.

The court resolutely maintains that Section 16(1) makes no distinction between divisional applications submitted voluntarily and those filed in response to a Controller’s objection. It firmly reiterates that divisional applications can be upheld in both situations, as long as multiple inventions are evident from the provisional or complete specification. Irrespective of the circumstances surrounding the application, be it voluntary or in response to a Controller’s objection, the court’s definitive verdict overturns the previous Boehringer Ingelheim ruling, firmly establishing that a divisional application can be based on multiple inventions disclosed in the provisional or complete specification.

The interpretation upheld in the present case is crucial for applicants seeking to protect different aspects of their inventions. The case establishes a new precedent that makes the patent registration process simpler and more comprehensible. The judgment also carefully considered the language, interpretation, and purpose of Section 16, which would serve as a guide for future applicants and other decision-makers and help improve India’s patent legislation and registration procedure.

Author: Roshani Rathore, A Student at O.P. Jindal Global University, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References:

1 IPAB Order No. III of 2011

2 IPAB Order No. 19 of 2013

3 MANU/DE/2531/2022

4 Boehringer Ingelheim International GMBH v. The Controller of Patents, MANU/DE/2531/2022