International report - IPAB reiterates, "No divide and conquer" 27 Feb 13
Lakshmikumaran & Sridharan - India
In a recent decision in Syngenta Participations AG v Union of India the Intellectual Property Appellate Board (IPAB) reiterated that divisional applications may be filed only in the case of a plurality of inventions.
In the present case, the invention pertained to Microbicide, a fungicidal composition based on metalaxyl and a method of controlling and preventing fungal infestation in plants. The first independent claim pertained to the composition thereof and was followed by four dependent claims. Claim 6 was an independent claim for the method and also had dependent claims. Claims 1 to 5 and 13 were rejected by the examiner on various grounds. The applicant then filed a divisional application which shared a common specification with the parent application. Claim 1 of the divisional application was a combination of Claims 1 and 2 of the parent patent application, and Claims 2 to 5 of the divisional application were identical to Claims 3, 4, 5 and 13 of the parent application.
The IPAB had previously held in Bayer Animal Health GmbH, Germany v Union of India (Order 243/2012) and in LG Electronics Inc v The Controller of Patents & Designs that existence of plurality of inventions is a sine qua non to file a divisional application. According to IPAB jurisprudence, divisional applications cannot be used for double patenting. However, the case at hand has an interesting background, since the parent application included subject matter that was not patentable under Indian law when it was filed.
In this case, the applicant filed the parent application (304/DEL/97) on 5th February 1997, and on 16th April 2001 the first examination report (FER) was issued. On 16th July 2002 a divisional application (748/DEL/2002) was filed while the parent application was still pending. On 25th April 2008 the FER was issued for the divisional application. The Patent Office stated that the divisional application was invalid and provided an opportunity to the applicant to be heard, after which the impugned order was passed.
The applicant submitted that it had already withdrawn the parent application and therefore the question of double patenting did not arise. Relying on the doctrine of legitimate expectation, the applicant raised concerns that ideally, the government should have protected cases such as the current application and not have examined them before 1st January 2005. However, the IPAB was of the view that it was concerned with the interpretation of Section 16 of the act, and that the act cannot be interpreted in a different way on a case-by-case basis; rather, it must be interpreted so that it can be applied uniformly in all situations with guided reasoning.
The applicant further contended that that notifications issued by the controller on 3rd May 2005 and 18th July 2008 supported its cause. The first notification stated that divisional applications relating to inventions not allowable before 1st January 2005 shall be allowed if they have been filed without following Section 16. The second notification, which specifically mentions product claims, directs the review of the divisional application. The IPAB rejected this contention and held that no office instruction issued by the controller can override any provisions of the act and, contradicting the applicant's arguments, found the notifications to be in cognisance of the act. The IPAB interpreted the notifications to mean that some applications filed before 1st January 2005 may have comprised a plurality of inventions, and one such invention may have related to a product which was not patentable under the earlier act. Those applications could now be processed as divisional applications, subject to the conditions for grant of a patent and for qualification as a divisional application. The IPAB stated that the notification could not be construed to mean what the applicant implied.
The IPAB held that the existence of a plurality of inventions or inventive concepts in the parent application is a critical and mandatory requirement under Section 16 of the Patents Act, and dismissed the appeal.
The language used in Section 16 and the corresponding language employed by the IPAB are interesting. Under Section 16 of the act, a further application can be filed in respect of an “invention disclosed in the... specification” and this wording is continuously reiterated in the IPAB’s orders. An interesting question is whether a division can be filed for an invention that is potentially disclosed in the parent application, but not claimed therein. On the one hand, the use of the word "disclosed" in the provision seems to allow for this possibility. On the other hand, the term "invention" is generally understood to refer only to what has been claimed, as opposed to being just disclosed. If plurality of inventions is a sine qua non for filing a divisional application, an issue relating to plurality of inventions cannot arise for disclosed but unclaimed inventions. However, this question has not been an issue as yet, so it remains to be seen how the IPAB and the courts would rule on it.
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