Divisional patent applications in India: the power of a comma
Archana Shanker of Anand and Anand explains the significance of punctuation in statutes with reference to the Indian case law regarding voluntary and mandatory divisional applications
Divisional patent applications play a crucial role in the strategic arsenal of patent applicants to enable them to protect different facets of their invention originally disclosed in their primary (parent) patent application.
The landscape surrounding divisional applications underwent a significant shift following the inaugural ruling in 2012 by the Intellectual Property Appellate Board (IPAB) in the LG Electronics case that examined the maintainability of a divisional application. The IPAB’s decision in LG Electronics established three essential conditions for the maintainability of a divisional application:
Addressing any defects associated with the multiplicity of invention in one application;
Facilitating the filing of divisional applications for multiple inventions disclosed in one application; and
Permitting the priority date of the parent application for the corresponding divisional application.
The LG Electronics case introduced the foundational criteria for initiating voluntary divisional applications, stipulating that the claims of the voluntary divisional application must pertain to a “distinct invention”.
Subsequent to this seminal decision, a cascade of rulings reverberated with the same criterion. In 2020, the IPAB, in the case of Esco Corporation v The Controller of Patents & Designs, introduced an additional criterion for determining the maintainability of a divisional application. This criterion mandates that the claims of the divisional application, whether filed voluntarily or mandatorily, must be rooted or deducible and derived from the claims of the parent application. The IPAB’s pronouncement further emphasised the legal principle that “what is not claimed is disclaimed”.
Subsequently, the High Court of Delhi, in its judgment in Boehringer Ingelheim International GMBH v Controller of Patents and Another (2022), concurred with the IPAB's findings in the Esco case. The court, in alignment with Section 10 of the Indian Patents Act, 1970, asserted that the crux of the invention resides within the claims and the determination of whether unity of plurality of inventions form a single inventive concept hinges on an examination of the claims.
Language of the legislation
The application of these criteria must be scrutinised through the lens of Section 16 of the Indian Patents Act, 1970, which covers the submission of voluntary and mandatory divisional applications and states as follows: "A person who has made an application for a patent under this Act may, at any time before the grant of the patent, [(A)] if he so desires […] 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 [or (B) file a further application] 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 [emphasis added].”
The two criteria stipulated for divisional applications may seem discordant with the ordinary and natural meaning of Section 16(1), as limbs A and B stand as self-contained alternatives. The emphasis in Section 16(1) is on the following aspects:
“Disclosed” in limb A versus “claimed” in limb B;
“Provisional/ complete specification” in limb A versus “complete specification” in limb B; and
The presence of a comma in Section 16(1) that distinguishes the requirements of filing voluntary and mandatory divisional applications.
Clearly, from the wording of the provision, the filing of a divisional application, whether voluntary or mandatory, rests on the disclosure rather than the claims contained in the provisional application or complete specification. It is evident that the legislature's intent was to allow divisional applications based on the disclosure of the invention of a patent application, whether complete or provisional. A provisional application neither undergoes examination nor includes a claim.
If the intention of the legislature was for the claims of the divisional application to be contingent upon the claims (in addition to disclosure) in the parent application, the language could have been as follows: “File a further application in respect of an invention disclosed and claimed in the
provisional or complete specification already filed in respect of the first mentioned application”.
This artificial distinction drawn is not a legislative creation. Section 16 does not operate differently for divisional applications based on disclosure in provisional applications versus those based on the claims of a complete specification. Clearly, the specifications of patent applications, whether in India or elsewhere, may include numerous inventive concepts and embodiments, yet only claim one inventive concept or embodiment in the filed claims. This by no means obstructs and forecloses the right of an applicant to file one or more divisional applications based on the disclosure in the patent specification.
Mandatory divisional applications
Analogously, in the context of mandatory divisional applications, the compulsion to file one or more divisional applications emerges from an objection raised by the Indian Patent Office concerning a plurality of distinct inventions under Section 10(5) during the scrutiny and examination of a patent application under sections 12 and 13 of the Indian Patents Act, 1970.
This interpretation is also aligned with the Agreement on Trade-Related Aspects of Intellectual Property Rights and Article 4(G) of the Paris Convention for the Protection of Industrial Property.
Article 4(G)(1) of the Paris Convention for the Protection of Industrial Property envisions two distinct scenarios warranting the finding of a divisional application. Article 4(G)(1) envisages such an application being filed when the first examination report reveals that the original application embodies more than one invention.
Article 4(G)(2) provides for the filing of a divisional application suo moto. The provision is unequivocal in including the necessity of a plurality of distinct inventions in the application exclusively with regard to Article 4(G)(1). Article 4(G)(2) lacks any such requisites. Even so, neither Section 16(1) nor Article 4(G)(1) and 4(G)(2) requires the claims of a divisional application to be based on, or derivable from, the claims of the parent application.
A significant addition to the case law
More recently, in sync with the aforementioned criterion, a co-ordinate bench of the High Court of Delhi, in Syngenta Limited v Controller of Patents and Designs (July 26 2003), diverged from the previous orders of the IPAB and the High Court of Delhi decisions. The crux of the court’s ruling lies in the analysis of three expressions and a punctuation mark within Section 16(1) of the Indian Patents Act, 1970; namely:
Two distinct expressions used in Section 16(1); i.e., “relate to” and “disclosed in”;
The absence of a comma in Section 16 (1) of the Indian Patents Act, 1970 after the expression “or with a view to remedy”; and
The acknowledgment that the basis for the further application can be the "disclosure in the provisional or complete specification”.
The court asserted that the significance of the expressions “relate to” and “disclosed in” cannot be overlooked and underestimated.
It was held that when the controller raises objections regarding the claims of the complete specification in the parent application encompassing more than one invention, the applicant retains the right to file additional application(s) concerning an invention disclosed in the provisional or complete specifications. As the provision stands, it does not necessitate that a plurality of inventions be included in the claims of the parent application.
The court asserted the significance of the expressions and held that “a provisional application is not required to contain claims. Section 16(1) of the Patents Act permits a divisional application to be filed even in respect of an invention disclosed in the provisional specification filed in respect of the parent application. If the requirement of plurality of inventions being claimed in the parent application were to apply, therefore, no divisional application could ever be filed where the parent application contains only provisional specifications, as provisional specifications are not to include claims. Inasmuch as Section 16(1) permits divisional applications to be filed in respect of inventions disclosed in provisional or complete specifications in the parent application, the specification of plurality of inventions in the claim can never be an imperative.”
The importance of punctuation in statutes
Additionally, the court held that the absence of a comma in Section 16(1) following the term "controller" unmistakably delineates two scenarios under which a divisional application can be lodged. First, the applicant of the parent application may file a divisional application if they so desire.
The second circumstance arises when the applicant aims to address an objection raised by the controller on the ground that the claims of the complete specification relate to more than one invention. This interpretation stems from the fact that Section 16(1) includes a comma after "if he so desires", while no such comma follows "raised by the controller".
The court also upheld the importance of a punctuation mark in a statute. In a statute, punctuation is often determinative of its construction and interpretation. While the court may be driven to ascribe a legal position to a statutory provision, it cannot disregard the syntactic structure meticulously crafted by the legislature.
The court ruled that there exists no justification to presume that the absence of the pivotal comma after "by the controller" in Section 16(1) would compromise the statutory intent. Instead, such a construction would harmonise Section 16(1) with the corresponding provision in the Paris Convention for the Protection of Industrial Property.
Lastly, the court held that Section 16(1) envisages the submission of a divisional application based on the disclosure within the complete specification. The legislature has refrained from instituting an artificial distinction between the filing of a divisional application grounded solely in the claims of the parent application. It is common practice in patent law across various jurisdictions, including India, that a provisional application need not encompass claims. Consequently, the act of filing a divisional application based on the disclosure within the provisional application cannot be deemed redundant, given the interpretation of preceding orders.
Considering the divergence in views among judges of the co-ordinate bench of the High Court of Delhi, this matter has been referred to a larger bench. For the time being, it is Anand and Anand’s opinion that the latter order should take precedence, as it meticulously considers all previous decisions rendered by the IPAB and the High Court of Delhi.