Boehringer Ingelheim International GmbH v Controller of Patents (2022)

Summary

“The present appeal arises out of the impugned order dated 25th March, 2022 by which the Controller of Patents” ... “has rejected the request of the Appellant-Applicant” ... “for pursuing a divisional application bearing no.20178031279 dated 4th September, 2017, titled ‘A medicament of a DPP inhibitor’.” (para 1) “The background of this appeal is that the Applicant had filed a National Phase PCT Application on 14th November, 2008, for ‘Use of DPP IV Inhibitors’.” (para 2) Two further amendments “were, thereafter, sought to be converted into a divisional application filed on 4th September, 2017.” (para 3) “The Controller passed the written order in January 2018, refusing the amendments as also the parent application. The timing of filing the divisional application is thus very interesting.” (para 25) “The present appeal is a case where the patent Applicant is seeking to file a divisional application to claim a monopoly in respect of DPP IV Inhibitors, which were originally not claimed in the parent application at all.” (para 17)

The Court framed “an important issue as to whether divisional applications can be filed for claims, when such claims were not part of the claims in the parent application.” (para 26) It held that “a divisional application under Section 16 of the Act, has to be an application which arises from a parent application disclosing a ‘plurality of inventions’” (para 28), and that “the divisional application would be maintainable only when the claims of the parent application disclose ‘plurality of inventions’.” (para 31) It was “clearly of the opinion that a divisional application in the present case cannot be filed since there was no ‘plurality of inventions’ in the parent application.” (para 35) “In view of the above findings, this appeal is held to be completely devoid of any merits.” “Hence, the appeal is rejected with costs of Rs.50,000/- to be paid by the Applicant within four weeks.” (para 36)

What the court decided

1. A parent disclosing plural inventions. “From the above provisions, it is clear that a divisional application under Section 16 of the Act, has to be an application which arises from a parent application disclosing a ‘plurality of inventions’. In Section 16(1), the phrase ’the claims of the complete specification relate to more than one invention’ makes this position clear. Section 16(3) also makes it clear that there cannot be duplication of the claims in the two specifications i.e., parent specification and the divisional application.” (para 28)
2. The invention resides in the claims. “But what is crucial to note, is the fact that the invention itself is defined in the claims. While such claims do have to be based on the disclosure in the specification, however even if a person does not read the complete specification and wishes to identify the invention, the place to look for it is in the ‘Claims’. The Invention thus resides in the Claims. Accordingly, ‘unity of the invention’/ ‘plurality of inventions’ and whether they form a ‘single inventive concept’ has to be gleaned from a reading of the claims.” (para 30)
3. Plurality in the parent’s claims. “Therefore, under Section 16, the question of whether the claims of the complete specification relate to more than invention i.e., a ‘plurality of inventions’ has to be seen from the claims of the parent application.” “However, if the invention is not contained in the claims of the parent application, the divisional application cannot be permitted to be filed solely on the basis of disclosure made in the specification, in respect of alleged inventions. If applicants are permitted to file such divisional applications on the basis of disclosure in the complete specification, without such inventions being claimed in parent applications, it would defeat the fundamental rule of patent law i.e., ‘what is not claim is disclaimed’.” “Thus, the divisional application would be maintainable only when the claims of the parent application disclose ‘plurality of inventions’.” (para 31)
4. The IPAB decisions. “This position of law is also borne out by various decisions of the IPAB.” Of ESCO Corporation v. Controller of Patents & Designs, the Court reproduced that “In either case the existence of plurality of invention in the parent application is the sine qua non for a divisional application.” (para 32) “This position also finds favour in the IPAB’s decision of LG Electronics, Inc. v. Controller of Patents & Designs” (paras 32–33)
5. Milliken. “Even in Milliken (supra) which has been relied upon by the Applicant, the parent application had a plurality of inventions in its claims which was then moved to the first divisional application and then to the second divisional application.” (para 34)
6. Use claims and product claims. “In the present case, the original ‘DPP IV inhibitor’ arising out of a Markush formula, in various permutations and combinations describing its use and method for treatment, which is only mentioned in the examples in the specification, cannot be permitted to be claimed as separate product Claims in a divisional application, as there were no product Claims in the parent application. Clearly, the Claims in the parent application only related to method or use claims whereas, the Claims in the divisional application concern ‘products’ i.e., medicaments or their combinations.” (paras 22, 35)
7. Disclosed but not claimed. “Once the product Claims were not sought in the original application and the said products were clearly disclosed in the content of the complete specification, the products ought to be treated as having been disclaimed. Thus, the parent application cannot be interpreted to have included a ‘plurality of inventions’, i.e., completely new product Claims, patentable by way of a divisional application.” (para 35)
8. Procedure. Disposition and costs. “Considering that such long-drawn proceedings emanated from one parent application, resulting in two separate applications, three Amendments and the time that has been consumed between 2008 to 2017, and the timing of the divisional application, this Court deems it fit to reject the appeal along with payment of some costs by the Applicant. Hence, the appeal is rejected with costs of Rs.50,000/- to be paid by the Applicant within four weeks.” (para 36) “The present appeal is accordingly dismissed.” (paras 36–37)

Subsequent treatment

• Followed — In OpenTV Inc v Controller of Patents and Designs (2023) the Delhi High Court held that “The question as to the nature of amendments that are permissible during prosecution of a patent application has been dealt with in detail by this Court in Nippon A And L Inc. v. The Controller of Patents, 2022 SCC OnLine Del 1909 and decision dated 12th July, 2022 in C.A. (COMM.IPD-PAT) 295/2022 titled Boehringer Ingelheim International Gmbh V. The Controller Of Patents & Anr.” (para 48)
• Overruled — In Syngenta Ltd v Controller of Patents and Designs (2023), on a reference from the Single Judge, the Division Bench of the Delhi High Court held: “We thus find ourselves unable to concur with the view as expressed in Boehringer Ingelheim and the said judgment shall consequently stand overruled. We hold that a Divisional Application moved in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed.” (para 32)