Divisional Applications Demystified: How The 2024 Amendments To Rule 13 Are Shaping Patent Filings
On March 15, 2024, the Department for Promotion of Industry and Internal Trade, under the Ministry of Commerce and Industry, has published the Patents (Amendment) Rules, 2024. In the Patents (Amendment) Rules, 2024, Rule 13 has been amended to add a new sub-rule (2A). The rule 13(2A) is added after rule 13(2) which reads as “A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made”. The newly added rule 13(2A) reads as, “A patent applicant may, if he so desires, file one or more further applications under section 16, including in respect of an invention disclosed in the provisional or complete specification or a further application filed under section 16”.
The new rule 13(2A) clarifies the scope of divisional patent applications. It allows applicants to submit one or multiple patent applications under section 16 for inventions that have already been disclosed in provisional or complete specifications or other filed applications.
The new rule 13(2A) clarifies the contradiction to an earlier decision by the Delhi High Court from Boehringer Ingelheim International GMBH v. The Controller of Patents (C.A. [(COMM.IPD-PAT) 295/2022 & I.As.10369-70/2022].
Boehringer Ingelheim International GMBH v. The Controller of Patents
In this case, Boehringer Ingelheim International GMBH had filed a patent application in the Indian Patent Office on November 14, 2008, with the title 'Use of DPP IV Inhibitors'. The patent application includes a total of 18 claims. A First Examination Report was issued on 24th March 2014 by the Deputy Controller of Patents, with objections raised for the lack of novelty, inventive step, etc. A response to the First Examination Report was filed by the Applicant (i.e., Boehringer Ingelheim International GMBH) on March 24, 2014. Along with the response, an amended set of claims is also filed in which the Applicant sought to delete all claims except claims 14, 15 & 15A.
Thereafter, on 20th March 2015, the Applicant filed a form 13 seeking a voluntary amendment that sought to expand from three claims (i.e., claims 14, 15 & 15A) to claims 1 – 11. Further, on 18th February 2016, the Applicant again filed another Form-13 seeking a further voluntary amendment that sought to amend the claims to 1-15, i.e. four new claims were added to the claims 1-11. On 5th July 2017, a hearing notice was issued based on the claims filed on March 24, 2014 (i.e, claims filed along with FER Response), rejecting the amendments of claims sought on 20th March 2015 and 18th February 2016. The hearing was held in August 2017 and prior to the rendering of the decision on January 4, 2018, the Applicant sought to file a divisional application on September 4, 2017, by creating an amalgam of claims 1 to 11 (i.e., the amended claim set that was filed in parent application on 20th March 2015) and Claims 1 to 15 (i.e., amended claim set that was filed in the parent application on 18th February, 2016). During the hearing of the parent application, the Controller passed the decision that the amendments filed in 2015 and 2016 cannot be taken on record and refused the Application under Section 15 of the Indian Patents Act, 1970 as amendments carried out in claims were beyond the scope of claims as on record before the amendments. Furthermore, the patent office has refused the divisional application filed on 4th September 2017 for the reason that the division application itself could not have been permitted as the amendments were rejected in the parent application. The matter reached the Delhi High Court, which closely examined the concept of plurality of invention, and whether divisional applications could be filed for claims that were not part of the claims in the parent application. The court finally held that claims falling out of the scope of originally filed claims but within the scope of the complete specification of the parent applications are not allowed.
This decision of the Delhi High Court from Boehringer Ingelheim International GMBH v. The Controller of Patents is used for the interpretation of rule 13 and section 16 of the Indian patent act for filing of divisional application until a division bench of Delhi high court overturned the Boehringer Ingelheim case while ruling in the landmark case of Syngenta Ltd v. Controller of Patents and Designs. The division bench of the Delhi High Court delivered a resounding judgment, bringing much-needed clarity to the requirements for filing divisional applications and offering a precise response to the questions regarding the content of the divisional application and the circumstances in which it may be filed.
SYNGENTA LIMITED VS. CONTROLLER OF PATENTS AND DESIGNS, AND ITS IMPACT ON AMENDMENT TO RULE 13
In this case, a parent application dated 28 December 2005 was filed by Syngenta (the Appellant) to get a patent for an “Agrochemical concentrate comprising an adjuvant and hydrotrope”. 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) in which claim 1 is based on the one of the three preferred hydrotrope and oil-based adjuvant combinations which were earlier described in the specification of the parent application. After review, the parent application (IN252191) was approved on May 1, 2012. Following that, the Divisional Application no. 7059/DELNP/2011 was published on February 8, 2013. The Controller examined the divisional application, and on December 27, 2015, a First Examination Report was published. In response, the Appellant filed their answer to the FER. On February 8, 2017, a hearing notice was issued after the Patent Office’s First Examination Report (FER) and the appellant’s response. After allowing an opportunity of hearing to the Appellant, the deputy controller rejected the said divisional application via an order dated October 11, 2017, 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.
The matter reached to Delhi High Court where the Court pointed out that Section 16(1) of the Act allows the submission of a Divisional Application under two circumstances: first, when the applicant of the parent application submits it on their own initiative, and second, when the applicant submits it in response to a Controller objection. The controller usually raised the objection related to the divisional application when claims of the application apply to more than one invention.
Section 16 (1) of the Indian Patent act reads as “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.”.
The Court stated that the legislature's decision to omit a comma from Section 16(1) of the Act's language following "raised by the Controller" appeared to be made in an effort to match the clause with Article 4(G) of the Paris Convention. The existence of a comma following "if he so desires" in Section 16(1) suggested that the applicant could submit a Divisional Application on their own without the necessity of plurality of innovations. On the other hand, the requirement of a plurality of innovations, however, appeared to apply when the Controller raised an objection because there was no comma after the phrase "raised by Controller.". Further, the Court noted that the terms "relate to" and "disclosed in," employed in Section 16(1) of the Act, could not be overlooked for their importance and it would be adequate if the Divisional Application was submitted in relation to one invention disclosed in the provisional or complete specifications, even though the claims in the parent application must relate to a number of innovations.
Also, the Court accepted the appellant's claim that the need for multiple innovations in the initial application would only apply when filing a divisional application to respond to a Controller’s objection. The court did not rely on the interpretation given in the case of Boehringer Ingelheim International GMBH v. The Controller of Patents.
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Consequently, the Court presented two questions to a division bench at the Hon'ble Delhi High Court:
When the case was referred, the Single Judge observed that the Boehringer case couldn't be legally justified because it essentially altered Section 16 of the Act by substituting "disclosed in the provisional or complete specification already filed" with "claims." The Single Judge also noted that requiring multiple inventions to be included in the original claim would be a restrictive condition, applicable only when a divisional application is filed in response to a Controller's objection, not when the applicant files it voluntarily.
First, the Division Bench disagreed with the Single Judge's view in the Syngenta case that the two categories should be treated differently. It ruled that the filing of a divisional application, whether done voluntarily by the applicant or in response to a Controller's objection, must be evaluated on the same basis. Second, the Division Bench concluded that there is no need to limit the filing of divisional applications to instances where the claims contain multiple inventions. The terms "disclosed in the provisional or complete specification" in Section 16 of the Act clearly contradict such an interpretation.
The Bench reasoned that since no claims are required in a provisional filing, accepting Boehringer's logic would mean that no divisional application could be filed if a provisional specification is submitted. The Bench further noted that the principle of "what is not claimed is disclaimed" is more relevant to infringement analysis than to the formulation of claims.
Hence, the Delhi High Court's judgment in the Syngenta vs. Controller of Patents case clarifies the uncertainties regarding the filing of divisional applications in the following ways:
In view of the above, it can be clearly ascertained that the introduction of new rule 13(2A) is in line with the decision of the Division Bench of the High Court in the Syngenta case.
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Article By: Shashank Anand (Patent Associate)