Delhi High Court overrules Boehringer Ingelheim decision

Delhi High Court overrules Boehringer Ingelheim decision

States that divisional application under Patents Act is maintainable if plurality of invention is disclosed in the claims

The Delhi High Court has overruled the judgment passed by a single-judge bench in the Boehringer Ingelheim International GMBH vs. The Controller of Patents case.

The division bench comprising Justice Yashwant Varma and Justice Dharmesh Sharma rendered the decision in context with Section 16 of the Patents Act, 1970.

The provision allows filing a further (divisional) application on an invention disclosed in the specifications of a preceding patent application, suo motu or consequent to an objection raised by the Controller.

Syngenta, a corporation engaged in research and development, also manufactures and distributes chemicals, agriculture, and healthcare-related products worldwide.

In 2005, it made an application to the Controller for its invention related to an agrochemical concentrate. While the application was pending, Syngenta filed a divisional application seeking to amend its claim(s).

While the original application was granted, the divisional application was rejected. It was done on the basis that it should have disclosed more than one invention in the parent application.

Aggrieved by the order, Syngenta filed an appeal.

During the proceedings before Justice C. Hari Shankar, advocate Sushil Kumar Pandey appearing for the Controller, referred to the decision in the Boehringer Ingelheim case, wherein another single-judge bench had relied on the doctrine ‘what is not claimed is disclaimed’. It ruled that for a divisional application to be maintainable, plurality of inventions must form a part of the claims in the parent application.

However, Justice Shankar had not concurred with the view. He maintained that it was sufficient for a plurality of inventions to be disclosed in provisional or complete specifications. The requirement present in the original application did not apply when a divisional application was filed suo motu.

The judge believed that the interpretation of the case needed to be revisited. His reference raised two questions before the division bench on the maintainability of a divisional application.

One, whether the requirement contained in the parent application applied even when a divisional application was filed suo motu. Two, if a plurality of inventions present in the parent application would suffice if it reflected in provisional or complete specifications or claims.

Representing Syngenta before the division bench, advocate Pravin Anand argued that the maintainability of a divisional application was a question to be answered independent of the outcome of the parent application. He asserted that Section 16 stated there shall be no duplication of claims in the parent and divisional applications.

Thus, Justice Varma and Justice Sharma held that the doctrine ‘what is not claimed is disclaimed’ did not apply to divisional filing and claim drafting. If the view expressed in Boehringer Ingelheim was accepted, no divisional application would be maintainable in a case where a provisional specification was present. Therefore, in provisional filing, claims need not be specified.

The bench added that there was no perceivable dichotomy in Section 16 on divisional applications filed suo motu vis-à-vis those filed pursuant to an objection being raised by the Controller.

The court held, “In either of those situations, the plurality of inventions would have to be tested based upon the disclosures made in either the provisional or complete specification.”

It stated that Section 16 unambiguously enabled the filing of a divisional application, provided a plurality of inventions was disclosed in the provisional or complete specification already filed.

The view of the judges was bolstered by clause 05.02.02 of the Manual of the Patent Office Practice & Procedure, which stipulates that a provisional specification may not include any claims.

Holding that the judgment in the Boehringer Ingelheim would lead to an incongruous situation, the bench stated, “It is this significant facet which additionally convinces us to hold that Boehringer Ingelheim was clearly decided incorrectly when it held that the existence of plural inventions must be found in the claims.”

The appellant was counseled by advocates Pravin Anand, Archana Shanker, Gitika Suri, and Ashutosh Upadhyaya.

Advocates Sushil Kumar Pandey and Kuldeep Singh appeared for the respondent.

The intervenor was represented by advocates Rajiv Kumar Choudhary and Vikram Singh Dalal.