In the first part of a two part guest post series, Amit Tailor reviewed what the Delhi High Court said on the issue of maintainability of divisional applications in Boehringer Ingelheim vs. The Controller. This second part continues where that post left off, and brings us analysis on whether or not, for the purposes of maintaining a divisional application, there must be a plurality of inventions in the claims of the parent application.
When can/not a Patent Application be Divided? Part II: Claims & Pluralities
Author: Amit Tailor
Shall not a Divisional Application with ‘New’ Claim(s) be Maintainable at all, even if it is Supported by the Description?
The Hon’ble Court, by the conjoint reading of Sections 10, 15 and 16, concluded that –
- to maintain a divisional application, there must be more than one inventions in the claims of the parent application; and
- a divisional application with a claim(s) which was(were) not present in the claims of the parent application is not maintainable, even though the claim is supported by the description. [“What is not claimed is disclaimed.”]
But the question here is, is the conclusion of the Court in harmony with the express mandate of Sec. 16, which allows the applicant to file a divisional application ‘if he desires so’? Relevant to this question is the Clause-1 of Sec. 16, which is reproduced herein-
16(1) A person who has made an application for a patent under this Act may, at any time before the grant of 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. [emphasis added]
Simple reading of the above clause indicates that the applicant, if he desires so, can file a divisional application in respect of an invention disclosed in the provisional or complete specification of (the parent) application. Which indicates that the claims of a divisional application may not need to be found in the parent claims but should be disclosed in the parent specification – either provisional or complete. We may come to such an inference by carefully reviewing the lexicography of the clause. It is worth noticing that there is no comma (,) after the expression “to remedy the objection raised by the Controller” in the text of the Clause. Therefore, the condition precedent – “the claims …. relating to more than one invention” may only be associated with the prong “with a view to remedy the objection raised by the Controller” and it may not be prudent to extend the same condition to the prong “if he so desires”.
Had the legislative intent, behind the Clause, been to limit the filing of divisional application on the applicant’s own will also to have the prerequisite of having ‘more than one invention in the claims’, the clause would have been drafted as – “if he so desires[comma] or with a view to remedy the objection raised by the Controller[comma] on the ground that the claims of the complete specification relate to more than one invention,…”. But that is not the case, the text is “if he so desires[comma] 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,…”. (please note the absence of ‘comma’ in the second prong)
Therefore, with respect to ‘at will’ filing by the applicant the Clause may not be read as “if he so desires, ….on the ground that the claims … relate to more than one invention”; rather it can be read as “if he so desires…(may) file a further application”. Accordingly, if the applicant desires, they may be allowed to file a divisional application with claim(s) in respect of an invention disclosed in the provisional or complete specification.
Contrarian Views over Maintaining a Divisional Application
Based on reading of the Clause with a different perspective, for maintaining a divisional application filed by the applicant on his own volition, we have come to two opposite interpretations –
- The Court’s view – there must be ‘plurality of inventions’ in the claims of the parent application and the claim(s) of divisional must be present in the claims of the parent application; and
- The Contrarian View – the claims of the divisional can be in respect of an invention disclosed in the provisional or complete specification of the parent application [& the ‘plurality’ in the claims of the parent application may not be required]
Therefore, to know and understand the legislative intention behind the introduction, amendment and/or maintenance of the Clause; and to find which one of the two views are endorsed by the same, we can again go back to refer the Ayyagar Committee Report. The relevant discussion in the Report is –
“387. … Where the complete specification filed in respect of an application and the claims based thereon, relate to more than one invention the Controller is bound to raise an objection …. But even apart from such objection …, the applicant … might himself realise [the defect] … and seek to amend his complete specification to conform to the Act. In either of these cases the applicant would naturally be desirous of covering his invention which is disclosed in the specification already filed but which is excluded from the earlier complete specification, by filing a further application and obtain a patent therefor. It is to this situation that Clause 16 (1) is directed.
- Including these points the clause should with clarity specify that: —
(1) A further application may be made for an invention disclosed either in a provisional or a complete specification already filed …
(2) Such an application may be filed by an applicant who, either apprehends that his application might be held defective on the ground that more than one invention has been claimed in a complete specification, or in order to remedy a defect of this nature pointed out by the Controller … ” [Emphasis supplied]
The discussion fairly clearly suggests the intention behind drafting of the Clause (1) where it expressly mandates that ‘for this situation only’ the Clause-1 is directed to. Contrary to the ‘Contrarian View’ as discussed earlier, the Report at the very outset sets matter clear, when the discussion under para 387 opens with the disclaimer – where the claims relate to more than one invention… the Controller is bound to raise the objections to ‘unity of invention’. Even for the position where the applicant on his own volition files a divisional application, the report clearly suggests that they must realise [the defect] in their application; and the defect being discussed therein is ‘claims (of the complete specification) relating to more than one invention’. Thus, the report can be said to suggest that even for an applicant to file a divisional application own his own, without having received a ‘unity objection’ from the Controller, the claims (of the parent application) should relate to more than one inventions.
Reading of such intent and recommendation of the Committee can also be inferred by Clause-2 of para 391, which suggest that divisional application can be filed by an applicant who apprehends that he may receive an objection from the Controller that his application might be held ‘defective’ for having claims relating to more than one inventions.
Accordingly, it is safe to infer that the report suggested that, irrespective of the fact that the ‘unity’ objections are raised by the Controller or not, the applicant may file a divisional application only when there were more than one inventions in the claims of the parent application. And, irrespective of the lexicography of the Clause as discussed earlier, the same may be considered as the legislative intent behind drafting the Clause. With this inferred intent, the report suggested the text of the Clause to be (re)drafted as follows –
-
A redraft on the following lines will carry out the above suggestions: — “16. Other Orders of the Controller.—(1) (a) At any time before the acceptance of the complete specification a person who has made an application for a patent under this Act may, 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 specification provisional or complete already filed in respect of the first mentioned application.”
It can be seen that the Clause as suggested has been inserted in materially the unaltered form in the Patent Acts, 1970, when it was enacted.
The Patents Act, 1970; Section 16, Clause (1) – “A person who has made an application for a patent under this Act may, at any time before the acceptance of the complete specification, 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.”
It can also be noted that the Clause has remained materially unaltered even after successive amendments to the Act in 1999, 2002 and 2005. (The Tribunals Reforms (Rationalisation And Conditions Of Service) Ordinance, 2021 altered the sections and provisions related to the Appellate Board). The Clause as it stands today reads as –
16(1) A person who has made an application for a patent under this Act may, at any time before the grant of 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.
The Patents (Amendment) Act, 2005, amended the Clause (1) to substitute the expression “before the acceptance of the complete specification” with “before the grant of the patent” However, that does not alter the mandate of the clause, at least for the purpose of the instant inquiry.
Do also note the absence of [comma], as discussed earlier, in all versions of the clause – the one proposed by the committee, the one in the Act of 1970 and the one as existing today after the amendment of 2005.
The Clause, with respect to the prerequisites for filing and maintaining a divisional application, has remained practically unaltered since the so proposed by the Committee till the Clause was last amended in 2005. Therefore, it can be safely inferred that the legislative intent behind introduction and continued maintenance of the clause also remains unaltered to allow a divisional application only when there are more than one invention identifiable in the claims of the parent application. When there is no ‘plurality of inventions’ in the claims, a divisional application may not be maintained merely on the ground that the claims are supported by the parent complete specification.
The Court’s View Prevails with Additional Support from IPAB
Without any express reliance on the discussion of the Committee on the issue, the Hon’ble Court came to materially similar reading of the Clause that the ‘plurality of invention’ has to be present in the [claims] of the parent application and mere support in the patent specification is not enough to maintain a divisional application. However, to buttress this position, the Hon’ble court relied upon ESCO Corp v. Controller [OA/66/2020/PT/DEL] wherein the IPAB, after conjoint reading of Sections 7, 10 and 16, concluded that “10. … a patent application can only be divided, if it claims more than ‘one invention’. … if there is no objection on the ground of ‘plurality of distinct inventions’ [by the Controller, it] means [that] the claims … contains either a single invention or a group of inventions linked so as to form a single inventive concept and in such a scenario, no divisional application is allowable” [emphasis in original removed; emphasis supplied].
General Guidelines for Dealing with Divisional Applications
The whole discussion around the judgement of the Hon’ble Court in Boehringer Ingelheim (supra) can be summarized as: the Court held that a divisional application shall not be maintainable if, it contains – (a) a claim which was not part of the claims of the parent application, or (b) a claim which was examined and/or rejected during the prosecution of the parent application on any grounds other than the ‘unity of invention’. The Court’s view find support from the proposal and/or suggestions of the Ayyagar Committee, and from the IPAB in ESCO Corp. (supra). And un/fortunately, the ‘Contrarian View’ found support in none of them.
At this point, it would be worth to note that the ESCO board, after reviewing different provisions of the Act and various precedence of the Board, went on to compile the entire landscape around divisional applications and prescribed guidelines for dealing with divisional applications, under para 14 therein. It would be great to end this discussion by reviewing those guidelines. The directions prescribed by the Board same is summarized as follows, under two broad groups, –
Formal Grounds
- plurality of invention in the parent application is the sine qua non for (filing and maintaining) a divisional application;
- the applications need to be divided only on the ground of ‘plurality of invention’ as envisaged u/s 16;
- the claims of divisional shall have to have their routes in the parent application; (similar to the Hon’ble Court’s holding that the plurality of inventions should be present in the claims of the parent application and the a ‘new’ claim, which was not part of the parent application, may not be maintained in a divisional application)
- If a claim is held unpatentable under any other provisions of the law, it shall not be proper for filing divisional application for the same;
- once the parent application is abandoned, withdrawn or refused, no divisional can be filed out of it [same is also true even for ‘granted’ applications, under the express language of Sec 16(1)]
- once a divisional application is filed, any subsequent change of status of the parent application shall not have any bearing on the divisional application
- 16(2) requires that the complete specification of a divisional application shall not include any matter not in substance disclosed in the parent application. It doesn’t refer to matter disclosed but not claimed.
- The contention that some additional claim(s), which never formed part of the parent application, can be allowed in divisional application is negated, by in toto reading of the law, esp. when Sec. 16(1), 16(2), and 10(5) are read together.
Substantive Grounds
- mere presence of different embodiments in the specification and those being claimed as independent claims does not necessarily mean ‘plurality of inventions’ (they may be linked to a single inventive concept)
- if there existed ‘plurality of inventions’, (it is advisable that) the distinct groups should be identified in the Examination Report itself (by the Controller)
