Syngenta Ltd v Controller of Patents and Designs (2023)

Summary

“A learned Single Judge of the Court doubting the correctness of the view expressed in Boehringer Ingelheim International GMBH vs. The Controller of Patents has referred the following questions” (para 1), namely whether “the requirement of a plurality of inventions being contained in the parent application” applies “even where the Divisional Application is filed by the applicant suo moto”, and whether “the plurality of inventions” has “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” (para 1). Syngenta “made an application to the Controller in respect of its invention pertaining to an agrochemical concentrate comprising an adjuvant and a hydrotrope containing 14 claims” (para 4), and “On 15 September 2011, the appellant filed a Divisional Application” (para 5). The Controller, by “an order of 11 October 2017, proceeded to refuse the Divisional Application” (para 7), having “proceeded on the premise that for a Divisional Application to be maintainable, the disclosure of more than one invention must necessarily be embodied in the parent application.” (para 8)

The Bench held that “the filing of a Divisional Application either suo moto by the applicant or while meeting an objection raised by the Controller, would have to be answered on identical lines.” (para 17) It held that “Section 16(1) in unambiguous terms enables the filing of a further application in respect of an invention, provided it is disclosed in the provisional or complete specification already filed” (para 18), that “a provisional specification which is tendered to the Controller, may not include any claims at all” (para 20), and that the precept of “what is not claimed is disclaimed” “has no application to the subject of divisional filing and claim drafting.” (paras 29–30) “We thus find ourselves unable to concur with the view as expressed in Boehringer Ingelheim and the said judgment shall consequently stand overruled.” “The Reference stands answered accordingly.” (para 32)

What the court decided

1. Suo moto and objection-led divisionals. “In our considered opinion, the placement of a comma after the phrase ‘if he so desires’ pales into insignificance bearing in mind the position which emerges on a plain reading of Section 16(1) and which divides the two contingencies spoken of by using the word ‘or’. In our considered opinion, therefore, the filing of a Divisional Application either suo moto by the applicant or while meeting an objection raised by the Controller, would have to be answered on identical lines.” (para 17) “We, on due consideration of Section 16, fail to find or perceive an intended distinction or dichotomy with respect to the filing of Divisional Applications based on whether the same is filed suo moto or is activated by an objection that may be raised by the Controller. Section 16(1) does not appear to warrant any such distinction being carved out.” (paras 17, 25)
2. Disclosure in the specification. “We note that Section 16(1) in unambiguous terms enables the filing of a further application in respect of an invention, provided it is disclosed in the provisional or complete specification already filed.” “The significance of the provision using the expression ‘disclosed in the provisional or complete specification’ can neither be ignored nor discarded. While it would have been open for the Legislature to restrict the amplitude of that provision by stipulating that plural inventions must be embodied or be identifiable from the claims as originally filed, it has in unequivocal terms provisioned for the same being discernible from the provisional or complete specification.” (para 18)
3. No reading in of “claimed”. “Section 16(1) does not employ the expression ‘disclosed and claimed’ or ‘claimed’ in the latter part of that provision. The provision only speaks of inventions” “‘disclosed in the provisional or complete specification’. We thus find no justification to read Section 16 of the Act as prescribing that plural inventions must be found or stand reflected in the claims. In fact, such an interpretation would amount to rewriting the provision itself.” (para 21)
4. Provisional specifications without claims. “As is manifest from a reading of the aforesaid extracts of the Manual, a provisional specification which is tendered to the Controller, may not include any claims at all. 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. If that were accepted to be the correct interpretation and meaning to be ascribed to Section 16(1), it would lead to an incongruous situation where no Divisional Application could be possibly filed when only a provisional specification has been submitted.” (paras 19–20, 31)
5. Article 4G of the Paris Convention. “Article 4G clearly embodies the concept of Divisional Applications being filed. The said Article had also left it open to signatory States to determine and prescribe the conditions subject to which such applications may be considered. Learned counsel thus clearly appears to be correct in his submission that Section 16(1) corresponds and seeks to accord statutory recognition to Article 4G.” (paras 11, 22)
6. “What is not claimed is disclaimed.” “We also agree with the submission of learned counsel appearing for the intervener when he contended that the precept of ‘what is not claimed is disclaimed’ has no application to drafting of claims.” (para 29) “As is manifest from the above, while the aforesaid doctrine may be relevant for infringement analysis, it has no application to the subject of divisional filing and claim drafting. There thus does not appear to be any justification to impute the principle of ‘what is not claimed is disclaimed’ for the purposes of discerning the scope of Section 16.” (paras 29–30)
7. Obiter. A divisional broader than the parent. Of Koninklijke Philips Electronics NV v. Nintendo of Europe GmbH, the Bench reproduced that “a patentee may have a legitimate interest in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent” and held: “The aforesaid position would also commend acceptance in the context of our Act also.” (paras 26, 28)
8. The reference answered. “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.” “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. The Reference stands answered accordingly.” (para 32)
9. Procedure. Return to the Single Judge. “Let the papers of the present matter be now placed before the learned Single Judge on 17.10.2023.” (para 33)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.