What is scope of divisional application in a Patent? What are the criterion for evaluating, where an applicant for Patent can be said to be entitled to a divisional application?  What are basic requisites for a parent application, on the basis of which amendment of the same can be filed resulting into divisional Patent Application?

This Appeal dealt with similar issue. The Appeal was filed against order dated 25.03.2022 by the Ld. Controller of Patent where the request for the Petitioner in relation to divisional application bearing no.20178031279 dated 04.09.2017, titled 'A medicament of a DPP inhibitor was rejected by the Controller of Patent on the grounds inter alia that the divisional application was having similar claims.

Background of this case was that the Petitioner filed National phase application on 14.11.2008 with 18 claims , in which the Petitioner filed first amendment application in reply to first examination report and proposed to delete all claims except claim no.14,15 and 15A.

Subsequently in the year 2016, 2 more amendment applications were filed, which were there after sought to be converted into divisional application in the 2017. The controller of Patent rejected this application on the ground that the same are beyond the scope of originally filed claims.

Reasons for rejecting the divisional application was mainly on the grounds that since the original amendment applications have already been disallowed by the controller, the divisional application could not have been allowed, which were filed on the basis of amendment applications earlier filed.

Question before the Hon'ble Court was that:
Whether the divisional applications can contain the claims which were not there in the parent application?

The Relevant Section Section which takes care for the situation, where divisional application may be filed, is Section 16 of the Patent Act 1970. The relevant portion of the same is extracted as under:

Section 16 Power of Controller to make orders respecting division of application:

1. A person who has made an application for a patent under this Act may, at any time before the grant of Resultantly the provisions of Commercial Court Act 2015 were held inapplicable to the subject matter suits. 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.
    
2. The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

Sub section 2 of Section 16 of the Patent Act 1970 provides that complete specification of such divisional Patent Application  shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

Thus the Divisional Application can not contains any claims which were not disclosed in the patent Patent Application, on the basis of which the same was filed.

The other two conditions for filing such amendment application for divisional application is that the amendment must be by way of disclaimer or correction and that the same must be made in order to include facts. Other amendment can not be allowed while filing divisional Application.

As in the Divisional Application, the Plaintiff claimed products patent , which were not in the original patent specification, the same was rightly rejected.

In the Original Patent Application there were Claims 1 to 18 claims. These claims were wither use claims or method claims. There was  not even a single product claim in the entire set of claims filed originally.

By introducing amendment for divisional application, the Applicant introduced 25claims.The same were Claims 1-11, 14-18, 20-25 .These subsequently amended divisional patent application, these product patent claims were introduced in the divisional patent application. 

Another  important aspect regarding filing of Divisional Application is unity of invention. Section 10(5) of Patent Application provides for this. The same is reproduced as under:

10(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

It means if specification of the parent application only shows single invention or multiple invention resulting in single inventive concept, in that case also divisional application can not succeed.

For a divisional application, there must has to be plurality of invention. Meaning there by the specification of the parent application must contains multiple inventions. Only in that case divisional application can succeed.

The Hon'ble High court of Delhi in the present case observed that divisional application for Patent can not succeed as in the parent application only original 'DPP IV inhibitor' arising out of a Markush formula, in various permutations and combinations describing its use and method for treatment were disclosed, which can not be said to be plurality of invention.

Hence it can be said that for divisional application to succeed, the first criteria is that the amendment should only be by way of correction, disclaimer , incorporation of facts. The second criteria is that the divisional application should not contain any claims which were not disclosed in the Parent application. And the last one is that specification of the parent application must qualify for the test of plurality of invention disclosed in it. If a divisional Patent Application qualify for all these tests, it may qualify to be allowed.

Case Title: Boehringer Ingelheim Vs The Controller of Patents
Date Of Judgment: 12.07.2022
Case: C.A. (Comm.Ipd-Pat) 295/2022
Name Of Hon'ble Court: High Court Of Delhi
Name Of Hon'ble Judge: The Hon'ble Justice Prathiba M Singh

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
Email: [email protected] 9990389539