The concept of plurality of invention in the context of Divisional Patent Applications under Section 16 of the Patent Act 1970 has been a subject of legal interpretation and debate. "The issue that has arisen is whether the plurality of inventions must be reflected in the claims of the parent application or if it is sufficient for them to be disclosed in the complete specifications accompanying the claims." This article delves into the legal nuances and the evolution of this issue, focusing on a case before the Hon'ble Division Bench of the High Court of Delhi.

Background of the case:
Section 16 of the Patent Act 1970 governs the filing of Divisional Patent Applications in India. A Divisional Application is a separate application that can be filed based on a pending parent application. The primary question that has sparked controversy is whether the parent application must contain claims related to multiple distinct inventions for a Divisional Application to be filed.

Initial Interpretation by the Controller:
The Controller initially held that a Divisional Application could only be filed if the parent application contained claims related to multiple distinct inventions. Additionally, the Controller suggested that a Divisional Application could not be based solely on disclosures in the specification accompanying the parent application.

Single Judge's Interpretation:
This interpretation was further clarified by a Single Judge of the High Court of Delhi. The Single Judge opined that, to file a Divisional Application, the parent application should include claims related to multiple distinct inventions. This restrictive view seemingly necessitated the presence of such claims in the parent application and discouraged the reliance on disclosures in the specification alone.

Divisional Bench's Clarification:
However, a Divisional Bench of the High Court of Delhi later provided a more expansive interpretation. It emphasized that Section 16(1) of the Patent Act 1970 permits the filing of a further application for an invention as long as it is disclosed in the provisional or complete specification previously submitted in connection with the parent application. This interpretation opened the door to the possibility of filing a Divisional Application even if the claims in the parent application did not explicitly address multiple distinct inventions.

Key Determining Factors:
The pivotal question in the case revolved around whether the specification accompanying the parent application, be it provisional or complete, contained disclosures of multiple inventions. The Divisional Bench clarified that the viability of a Divisional Application hinges on the contents of the provisional or complete specification. This crucial determination has clarified the prevailing ambiguity, and it is no longer essential for the claims in the parent application to explicitly cover multiple distinct inventions.

"In other words, the Hon'ble Division Bench has dispelled the confusion by affirming that a Divisional Application is maintainable not only on the basis of claims but also based on the disclosure made in the provisional or complete specification of the patent." This interpretation aligns more closely with the legislative intent and accommodates situations where multiple inventions may not be claimed in the parent application but are nonetheless disclosed in the accompanying specifications.

Uniformity in Filing Divisional Applications:
In addition to clarifying the approach to plurality of invention, the Hon'ble Division Bench of the High Court of Delhi emphasized that whether a Divisional Application is filed suo moto by the applicant or in response to an objection raised by the Controller, the criteria for determining the presence of multiple inventions in the provisional or complete specification remain the same. This directive ensures consistency in the assessment of Divisional Applications, irrespective of the circumstances under which they are filed.

The Concluding Note:
The legal interpretation of the plurality of invention in the context of Divisional Patent Applications under Section 16 of the Patent Act 1970 has evolved from a restrictive stance to a more inclusive and accommodative perspective. The critical factor in determining the viability of a Divisional Application is whether the provisional or complete specification contains disclosures of multiple inventions, irrespective of the explicit claims in the parent application.

The Case Law Discussed:
Case Titled: Syngeta Limited Vs Controller of Patents and Designs
Date of Judgement/Order:13/10/2023
Case No. C.A.(Comm.IPD-PAT) 471 of 2022
Neutral Citation No: 2023:DHC:7473-DB
Name of Hon'ble Court: High Court of Delhi
Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma, H.J.

Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539