Divisional Patent applications- Scope of the original claim is not the limit!

An applicant can file a divisional patent application on his own or to meet the official objection raised by the Controller of Patents on the ground that claims of the invention relate to more than one invention, also referred to as a plurality of an invention. Section 16 of the Indian Patents Act provides for divisional and clearly mentions that the priority date for all the divisional applications will be the same as that of the main (or the Parent) Application. A divisional application is an application with different claims to that of the parent application, however, with substantially the same specifications and drawings.

Practical Issues 

In practice, the applicant would divide an application only when the Patent Office raises an objection on the ground that the invention lacks Unity. In other words, inventions claimed in a single patent application do not form a single inventive concept. Despite Section 16 providing that the applicant can file a divisional application “if he so desires”, in practice, it is challenging to do so. Further, such applications usually face a stronger examination in terms of being scrutinised for the actual reason of dividing the patent application by the applicant’s own volition. The Controller, in that case, evaluates all the reasons to rule out any intention of the applicant to obtain multiple protection on the same invention. In that the Controller would assess whether a) the claims in the divisional are a part of the claims of the parent application to assess the requirement of the plurality of Inventions, b) applicant has added any new claims or new features in the existing claims of the divisional application, c) the applicant has filed the divisional application on the same subject matter of the claims of the parent application because the claims in the parent were objected by the Controller on the basis of a single inventive concept.

Yet another important question that comes up is whether it is necessary for the claims of the divisional application to be divided from the claims of the parent application or if new claims be added that have support from the complete specification. The most accepted interpretation on this aspect so far was that the claims could be divided only from the claims of the parent application. This is also in line with the practice elaborated in the manual of patent office practice and procedure, Version 3.0 (dated 26th November, 2019), which states that “Claims of divisional application(s) shall be based on the claims of first mentioned (or earlier application for that matter) from which instant application is divided out and no addition of claims, which do not fall within the scope of said claims, is allowable.”

The abovementioned two aspects were dealt in detail by the Division Bench of Delhi High Court (two judges bench) in the matter of Syngenta Limited vs. Controller Of Patents And Designs, (judgment dated 13th October, 2023. The matter came to the Division Bench through a reference made by the Single Judge of Court as it raised doubt on the correctness of the views expressed in Boehringer Ingelheim International GMBH vs. the Controller of Patents, for the divisional patent application.

Boehringer Ingelheim decision 

In Boehringer Ingelheim International GMBH vs. the Controller of Patents, it was held that

1. 1. a) 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. The Court in Boehringer Ingelheim took the position that if the plurality of inventions is not contained in the claims of the parent application, the Divisional Application would not be maintainable.
   2. b) that a Divisional Application would neither be maintainable nor could one be permitted to be filed solely based on disclosures made in the specification. The learned Judge further observed that permitting the filing of such Divisional Applications even though the plurality of inventions is not mirrored or found in the claims would run contrary to the fundamental rule of patent law, namely, “what is not claimed is disclaimed.”

Division Bench Ruling 

Considering Boehringer Ingelheim’s decision, the following questions were addressed to the Division Bench dealing in the Syngenta matter for consideration:

“(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 applicant suo moto files the Divisional Application, and not based on 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 Bench addressed this question as “The principal contestation centers upon the question whether the plurality of invention is liable to be found in the parent claims or would it also extend to being discerned from the provisional or complete specification that may have accompanied the application for grant of a patent. The aforesaid issue forms the core of question”

Facts of the matter (Syngenta Limited vs Controller of Patents and Designs):

On 28th December 2005, it applied to the Controller in respect of its invention pertaining to an agrochemical concentrate comprising an adjuvant and a hydrotrope containing 14 claims.

The controller refused the patent application on the basis that for a Divisional Application to be maintainable, the disclosure of more than one invention must necessarily be embodied in the parent application. The Controller took the view that since the parent application did not contain any claims relating to plurality of a distinct invention, the Divisional Application was liable to be refused. The Controller additionally took into consideration the fact that the appellant had, while responding to the FER, raised no objection relating to plurality of inventions.

Analysis of the Division Bench in overruling the views expressed in Boehringer Ingelheim International GMBH vs. the Controller of Patents:

• • The Division Bench interpreted the precept of “what is not claimed is disclaimed” as having no application to the drafting of claims. This doctrine may be relevant for infringement analysis; however, it has no application to the subject of divisional filing and claim drafting. There thus does not appear to be any justification to impute the principle of “what is not claimed is disclaimed” for the purposes of discerning the scope of Section 16. This is more so when the language of Section 16, in clear terms, requires the plurality of inventions to be gathered from disclosures made either in the provisional or the complete specification. It was also interpreted that Section 16 speaks both of a provisional or a complete specification. However, in the case of a provisional filing, claims need not be specified at all. If the view as expressed in Boehringer Ingelheim were to be accepted, no Divisional Application would be maintainable in a case where a provisional specification has been presented. This is because the decision binds us to discover the invention solely in the claim.
  • The Bench also held that the filing of a Divisional Application either suo moto by the applicant or while meeting an objection raised by the Controller would have to be answered on identical lines. On due consideration of Section 16, there was no indication of the distinction or dichotomy with respect to the filing of Divisional Applications based on whether the same is filed suo moto or is activated by an objection that may be raised by the Controller. Section 16(1) does not appear to warrant any such distinction being carved out. Thus, the Divisional Application could well be maintained in either of those situations (by the applicant suo moto or to remedy an objection raised by the Controller), subject to the plurality of inventions being evidenced from the disclosures made in either the provisional or the complete specification.
  • The Court observed, “It would have been open for the Legislature to restrict the amplitude of Section 16 by stipulating that plural inventions must be embodied or be identifiable from the claims as originally filed; it has in unequivocal terms provisioned for the same being discernible from the provisional or complete specification. The provision (of Section 16) as structured, neither leaves any space for ambiguity nor does the language of the text warrant any doubt being harbored in respect of the clear intent of the provision. We thus find ourselves unable to concur with the interpretation placed upon that provision in Boehringer Ingelheim.

Position in the U.S.A. and Europe:

The concept of Divisional application exists in Europe as well as U.S. (by the name of In U.S. continuing application). The presence of multiple invention/s is the legal basis for dividing a patent application in U.S., according to 35 U.S.C. 121 as well as in E.P. according to Art. 82, Rule 36 of The European Patent Convention.

• • In U.S., Claims of a continuation application may be based on the subject matter that is present as a part of the specification.
  • Similarly, in E.P., the claims of a divisional application need not be limited to subject matter already claimed in claims of the parent application. However, the subject-matter may not extend beyond the content of the parent application as filed.

To sum up, the divisional patent application in India can be filed by the applicant by his choice or under requirement by the Patent Office. The claims of the Divisional patent application do not necessarily be split/divided from the claims of the parent application. Rather, the claims of the Divisional patent application can be drafted based on the features from the complete specification. The order of the Division Bench brings the practice of the Indian Patent Office in line with the E.P. and U.S. Patent Offices and provides much-needed clarity on this important aspect for grant of Patent.

 Author- Ranjan Narula and Suvarna Pandey