The Division Bench (2 Judge Bench) of the Delhi High Court in the case of Syngenta Limited v. Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 471/2022 (Judgement dated 13 October 2023) was adjudicating a referral by a Single Judge of the Delhi High Court, concerning the scope of divisional patent applications under Section 16 of the Patents Act, 1970 (Act). The Division Bench held that while plurality of inventions is required to file a divisional application, the plurality can be ascertained from the provisional or complete specification and need not be mandatorily restricted to the claims.
The referral was premised on the Single Judge’s disagreement with the decision of a co-ordinate bench of the Delhi High Court in Boehringer Ingelheim International GMBH v. The Controller of Patents, 2022 SCC OnLine Del 3777. The Single Judge in the Boehringer case held that if the plurality of inventions is not contained in the claims of the parent application, the divisional application would not be maintainable. The Single Judge also held that permitting the filing of divisional applications wherein plurality of inventions is not found in the claims, would run contrary to the fundamental rule of patent law, namely, “what is not claimed is disclaimed.”
The Single Judge in the Syngenta case proposed two questions to the Division Bench:
- Is the condition of plurality of inventions in the parent application, applicable even where the divisional application is filed by the applicant suo moto, and not based on any objection raised by the Controller?
- Assuming that the requirement of plurality is necessary for a divisional application to be maintainable, does the plurality have to be reflected in the claims in the parent application or is it sufficient if the plurality is reflected in complete specification?
At the time of referral, the Single Judge in the Syngenta case observed that the Boehringer case essentially reconstructs Section 16 of the Act and erases the phrase “disclosed in the provisional or complete specification already filed” and substituting it with the word “claims”, and therefore cannot be legally justified. The Single Judge also observed that the issue of plurality of inventions being embodied in the original claim would be a restrictive condition which would only apply in a situation where the divisional application is filed based on an objection raised by the Controller and not when a division application is filed by the applicant suo moto.
The Division Bench firstly held that filing of a divisional application, whether suo moto by the Applicant or in response to an objection by the Controller must be assessed on the same basis, thus rejecting the observation of the Single Judge in the Syngenta case to treat the two categories disparately.
The Division Bench secondly held that there appears to be no justification to restrict the filing of a divisional application only to a situation where the plurality of inventions is found in the claims. Such an interpretation is contrary to express words in Section 16 of the Act- “disclosed in the provisional or complete specification”. The Bench reasoned that in case of a provisional filing, there need not be any claims and therefore to accept the Boehringer reasoning would be tantamount to holding that no divisional application can be filed where a provisional specification is presented. The Bench also held that the percept of “what is not claimed is disclaimed” has no application to drafting of claims and is rather relevant in an infringement analysis.
The Bench accordingly overruled the decision in Boehringer and held that a divisional application can be maintained in either of the two situations, i.e., suo moto divisional filing or in response to an objection of plurality of inventions by the Controller; subject to the plurality of inventions being evidenced from the disclosures made in either the provisional or the complete specification.