When can/not a Patent Application be Divided? Part I: Boehringer Ingelheim vs. The Controller

We’re pleased to bring to you a 2 part guest post by Amit Tailor on the question of when a patent application can be divided, that came up in the recent case of Boehringer Ingelheim vs. The Controller. The first slightly shorter part focuses on reviewing the judgment on this question, while the second slightly longer part carries out an analysis of the same.

Amit is a post graduate in Pharmaceutical Sciences from National Institute of Pharmaceutical Education and Research (NIPER), S.A.S. Nagar (Mohali) and LL.B. from Faculty of Law, Maharaja Sayajirao University of Baroda (MSU), Vadodara. He has also completed his graduation in Pharmacy from MSU, Vadodara. Amit is a registered Patent Agent and an IP practitioner and currently part of the IP litigation team at Sun Pharmaceuticals. He also writes poetry with penname “કાચબો” [Kācabō – meaning tortoise/turtle] at www.amittailor.com : અમિતટેલર.કોમ – કાચબાની કલમનું કાયમી સરનામું (Permanent Address of the Pen of Kācabō). Amit has written several guest posts for us before and you can find them here.

When can/not a Patent Application be Divided? Part I: Boehringer Ingelheim vs. The Controller

Author: Amit Tailor

pic of scrabble tiles saying divide and conquer
Image from here

Can’t a divisional application be filed with claims which were ‘missed’ while filing the parent application? Can’t a divisional application be filed with any claim(s), as long as they are supported by the complete specification? Can’t a divisional application be filed from a set of claims which were not entered by the Patent Office/Controller during the prosecution of the parent application? Can a divisional application be filed for the set of claims which were rejected on formal and/or substantive grounds during the parent applications? All such issues arose while reviewing a recent judgement from the Delhi HC in Boehringer Ingelheim vs. The Controller (C.A. (COMM.IPD-PAT) 295/2022), wherein the Hon’ble Court declined to disturb a Controller’s order refusing a divisional application.

Brief facts of the Case

An application was filed with a set of claims which were later amended in response to the First Examination Report (the “First Amendment”). But, before the Patent office took the merit decision on the First Amendment, the applicant filed two successive amendments to the claims (the “Later Amendments”). The Controller, after hearing, refused the claims in the First Amendment for being allegedly anticipated by and/or obvious over the prior-art.  At the same time, the Controller also refused the Later Amendments, u/s 59(1), for the amended claims allegedly changed the scope of the claims and therefore did not fall wholly within the scope of the claims before the amendment.

However, soon after the hearing and before the Controller issued their order u/s 15 (which ultimately refused the application), the applicant filed a divisional application with materially the same set of claims as that submitted with the Later Amendments. The divisional application, after examination & hearing, was refused on the grounds that the division itself cannot be permitted, as the claims filed with the divisional application were already rejected in the parent application. And once a set of claims is examined and refused, it cannot be allowed to be entered in another application. Further, one more important remark from the Controller, while refusing the divisional application, was that the claims of the divisional application did not fall wholly within the scope of the “claims as filed” and hence not allowable u/s 59. The order refusing the divisional application was appealed before the Delhi HC.

I have discussed the issue of ‘extent of allowable claim amendments u/s 59(1)’ in more detail in my earlier post on SpicyIP (in two parts here: Part-1 and Part-2). I believe the discussion therein is equally relevant for the aspects of Section 59(1) associated with the facts and issues of this case – changing the Scope of the claims by amendment during prosecution. Therefore, this post is limited to the discussion on the aspects of divisional application only.

The Issue Before the Court on Appeal: Maintainability of the Divisional Application

The originally filed claims with the parent application were related to use of ‘DPP-IV inhibitors’ (a kind of anti-diabetic compounds) for preparing medicament for therapeutic use. And the divisional application was filed with claims for the DPP-IV inhibitors itself. i.e. the applicant was seeking to file a divisional application to claim ‘a product’ which was disclosed but not claimed as such in the patent application, wherein the parent application claimed ‘use’ of that product. Therefore, the primary issue framed by the Court was – “Can a Divisional Application be Maintained with a claim which was not part of the set of the claims as filed with the parent application?

The Parent Application Must have “Plurality of Inventions”

Section 16 of the Patents Act deals with the provisions of filing a divisional application specifically. However, in order to get the answer for the question under issue, the Court adopted a conjoined reading of Sections 10, 15 & 16 of the Act. After which the Court 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”. Until this point there is no case or controversy – multiple inventions have to be disclosed in the parent application in order to file and maintain a divisional application. But the question is where should this ‘plurality’ reside – in the specification or in the claims?

Where is the Invention? There Should Reside the ‘Plurality’.

To decide where to look for, to find the ‘plurality’, the Hon’ble Court referred to Sec 10 of the Act and made some important observations. The Hon’ble Court suggested that the title would indicate the subject matter of the invention and the specification may describe the invention, process, methods and best mode. But most important is the fact that the invention is defined in(by) the claims. The Court further commented that it is beyond doubt that the claims have to be based on the disclosure in the specification; however, if a person wishes to identify the invention of a patent application without reading the specification, they shall look into its claims. Thus, the Court opined that, the invention resides in the claims, and therefore, the inquiries like “unity of the invention” or “plurality of inventions” or “single inventive concept” have to be based on the claims itself.

The Court held that for the purpose of Sec. 16, the ‘plurality of inventions’ should clearly exist in the [claims] of the parent application. If an invention is not claimed in the claims of the parent patent application than the same cannot be permitted to be maintained in a divisional application, solely on the basis that the same was disclosed in the specification.

The analysis of the Court’s conclusion continues in part 2.

Tags: ,

About The Author

Leave a Comment

Scroll to Top