Syngenta Ltd v Controller of Patents and Designs (2023)

Summary

“This is an appeal under Section 117-A of the Patents Act, 1970, seeking to impugn the order dated 11 October 2017, passed by the Deputy Controller of Patents and Designs” ... “whereby Application No. 7059/DELNP/2011, filed by the appellant as a Divisional Application under Section 16” (para 1) of the Patents Act, “arising out of Application 6114/DELNP/2005, dated 28 December 2005” ... “seeking a patent for an ‘Agrochemical concentrate comprising an adjuvant and hydrotrope’ has been rejected.” (para 1) “Thus, in the Divisional Application, Claim 1 included the specified combination (c) of the three preferred combinations contained in the complete specifications of the parent application as the adjuvant-hydrotrope combination for Claim 1.” (para 6) For the Controller, counsel “places reliance on the judgment of a coordinate Bench of this Court in Boehringer Ingelheim International GMBH v. The Controller of Patents” (para 10), and the Court found that “There can be no gainsaying of the fact that the impugned order is in tune with the observations and findings contained in the judgment in Boehringer Ingelheim.” (para 11)

The Court recorded: “I must regretfully express my inability to agree with the view expressed by my learned sister in her judgment in Boehringer Ingelheim” (para 13). It found that “Mr. Anand appears to be correct in his submission that the requirement of a plurality of inventions being present in the original application would apply only to cases where the Divisional Application is filed to remedy an objection raised by the Controller, and would not apply where the Divisional Application is filed suo moto by the applicant.” (para 14.10) It held that “the invention in respect of which the Divisional Application is filed is required to be disclosed only in the provisional or complete specification filed in respect of the parent application” and that Boehringer Ingelheim “requires a revisitation.” (para 15.7) “I deem it appropriate to refer the following questions for consideration by a Division Bench of this Court to be constituted by and subject to orders of Hon’ble the Chief Justice” (para 17), the Registry being directed to place the matter for “an appropriate Division Bench to examine the aforesaid issues and return its view thereon, as they affect a large number of cases.” (para 18)

What the court decided

1. Two circumstances under section 16(1). “To my mind, Section 16(1) of the Patents Act clearly envisages two circumstances in which a Divisional Application can be filed. A Divisional Application may be filed by the applicant of the parent application, if he so desires. The second circumstance in which a Divisional Application is filed, is where the applicant seeks to remedy an objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention.” (para 14.2)
2. The missing comma. “Where there is no comma after the words ’the objection raised by the Controller’, however, it is plain that the requirement of the claims of the complete specification relating to plurality of invention is only relatable to the objection raised by the Controller.” (para 14.3) “If, however, the Divisional Application is being filed suo moto ‘if he so desires’, this requirement, prima facie, does not apply.” (paras 14.3, 14.7)
3. Punctuation in construction. “Punctuation, in a statute, is often determinative of its construction. In its urge to accord, to a statutory provision, what the Court feels the legal position ought to be, the Court cannot ignore the syntactical structure in which the legislature has crafted the provision.” (para 14.4) “That said, however, it is equally true that the Court should not allow itself to be swayed by punctuation in a statute where blind adherence would result in the statute being interpreted in a manner which is contrary to the plain legislative intent.” (paras 14.4, 14.6)
4. Article 4(G) of the Paris Convention. “This interpretation is also in line with Article 4(G) of the Paris Convention, which does not appear to have brought to the notice of the Coordinate Bench in Boehringer Ingelheim.” “The provision is clear and categorical in incorporating the requirement of plurality of inventions in the application only with respect to Article 4(G)(1). No such requirement is contained in Article 4(G)(2).” (para 14.8) “Prima facie, the decision of the legislature not to incorporate a comma after ‘raised by the Controller’ in Section 16(1) appears to be with a view to bring the provision in sync with Article 4(G) of the Paris Convention.” (paras 14.8–14.9)
5. “Relate to” and “disclosed in”. “Section 16(1) uses two distinct expressions; ‘relate to’ and ‘disclosed in’, and the significance of the use of these two distinct expressions cannot be overlooked.” (para 15.2) “The provision does not, as it stands, appear to require the plurality of inventions to form part of the claims in the parent application.” (paras 15.2–15.3)
6. Applied to the parent claim. “Claim 1 in the parent application relates to a plurality of inventions, as it would cover all cases where the single continuous phase comprises an oil based adjuvant and a hydrotrope.” “The divisional application of the appellant was filed in respect of one of such adjuvant-hydrotrope combinations and, therefore, ‘in respect of an invention disclosed in the provisional or complete specifications’.” (para 15.4) “To my mind, the application could not have been rejected solely on the ground that the plurality of inventions was not specifically contained in the claim, and only in the disclosure contained in the complete specifications.” (paras 15.4–15.5)
7. Provisional specifications without claims. Counsel submitted that “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.” (para 15.6) The Court held: “I find substance in the submission.” “As such, the invention in respect of which the Divisional Application is filed is required to be disclosed only in the provisional or complete specification filed in respect of the parent application.” (paras 15.6–15.7)
8. Boehringer Ingelheim doubted. “The view, expressed in Boehringer Ingelheim to the effect that the plurality of inventions must form part of the claims in the parent application, therefore, in my view, requires a revisitation.” (para 15.7) “As, for the reasons elucidated hereinabove, I am not able to convince myself that this is the correct position, I deem it appropriate to refer the following questions for consideration by a Division Bench” (paras 15.7, 17)
9. Procedure. The questions referred. “(i) Does the requirement of a plurality of inventions being contained in the parent application, in order for a Divisional Application to be maintainable, apply even where the Divisional Application is filed by the applicant suo moto, and not on the basis of any objection raised by the Controller?” “(ii) Assuming that the requirement of a plurality of inventions in the parent application is necessary for a Divisional Application to be maintainable, does the plurality of inventions have to be reflected in the claims in the parent application or is it sufficient if the plurality of inventions is reflected in the disclosures in the complete specifications accompanying the claims in the parent application?” (para 17) “The Registry is directed to place this matter before Hon’ble the Chief Justice for constituting an appropriate Division Bench” (paras 17–18)

Subsequent treatment

• Explained — In Syngenta Ltd v Controller of Patents and Designs (2023) the Division Bench of the Delhi High Court answered the reference. It held that “the placement of a comma after the phrase ‘if he so desires’ pales into insignificance” and that divisionals filed suo moto or on the Controller’s objection “would have to be answered on identical lines” (para 17), and 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”, overruling Boehringer Ingelheim (para 32).