The IPAB has set aside the Order of the Controller of Patents rejecting the divisional application under Patents Act, 1970. The Board observed that the Controller erred in not appreciating that it was technically impracticable to make compound of formula (I) dependent on the main claim of the parent application, which was directed towards compound of formula (III). It observed that it was settled that when an independent sub-claim cannot be made dependent on the main claim, the subject matter of such claim would be distinct from the subject matter of the main claim. The IPAB observed that the compound of formula (I) as claimed in the subject divisional application could be prepared from compound of formula (III) claimed in the parent but not vice versa, and hence the compound of formula (I) could not be an intermediate of the compound of formula (III). Claim of falling within the scope of Section 3(d) of the Patents Act was also hence rejected. It also noted that the compounds of formulae (I) were novel intermediates for the preparation of plant protection products and as such did not fell within the ambit of Section 3(d).
The IPAB also observed that Controller committed a grave procedural irregularity by reintroducing the objection on the validity of the divisional application during the official hearing, without prior notice. It held that the same was in contravention of the directions laid down by the IPAB in its various decisions holding that if the objections to be relied upon by the Controller are not communicated in the hearing notice, the same results in violation of principles of natural justice. Noting that the divisional application did not include any matter which was not disclosed in the parent application and that there was no overlap in the scope of the claims, it held that the divisional application fulfilled the requirements of Sections 16(2) and 16(3) of the Patents Act.
Further, observing that the Appellant had not derived any unfair advantage by filing a divisional application, the IPAB in the case Bayer Aktiengesellschaft v. Controller of Patent & Designs held that the Controller should not have refused the application on hyper technical grounds based on a premeditated intention.