Delhi High Court Allows Divisional Application Despite Multiple Inventions

Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand

Background

  • On 28 Dec, 2005 the Appellant made an application to the Controller concerning an invention about an agrochemical concentrate.
  • The original application was granted, however, the divisional application was rejected on the ground that the Divisional Application filed ought to have disclosed more than one invention in the parent application.
  • Thus, an appeal was filed against this order before the Single Bench of Justice C. Hari Shankar in which it was held that the stand in Boehringer Ingelheim, which held that the doctrine “what is not claimed is disclaimed”, is required to be revisited.

Legal Issues Involved in the Case

Relevance of the Plurality of Invention in Case of Divisional Application under Section 16 of the Patents Act.

Trademark Infringement Claim

The Division Bench of the Hon’ble DHC, presided over by Justices Yashwant Varma and Dharmesh Sharma recently overruled the judgment passed by a Single Bench in Boehringer Ingelheim International GMBH v. The Controller of Patents, in the context of Section 16 of the Patents Act, 1970. This section allows the filing of a divisional application in addition to the invention disclosed in the specifications of the prior patent application.

It was held by the court that it was sufficient for plurality of inventions to be mentioned in provisional or complete specifications and, that the requirement of plurality of inventions being present in the parent application does not apply when a divisional application is filed suo motu. In the proceedings before the Division Bench, the court opined that the doctrine had no application to divisional filing and claim drafting. Furthermore, the court stated that in case of a provisional filing, the claims need not be stated at all. The Bench interpreted that Section 16 enables the filing of a divisional application, provided that the plurality of inventions is disclosed in provisional or complete specifications.

Conclusion

The judgment provided in the case of Syngenta Limited v. Controller of Patents and Designs in C.A. (COMM. IPD-PAT) 471/2022 shows that Divisional patent applications in India have undergone a significant evolution. The said evolution is primarily driven by judicial interpretations of the legislation made by the courts. This would enable the patent applicants to have a clear understanding of the law and would also help the professionals working in this field to better guide their clients in obtaining patents.

Delhi High Court Allows Divisional Application Despite Multiple Inventions

Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand

Background

  • On 28 Dec, 2005 the Appellant made an application to the Controller concerning an invention about an agrochemical concentrate.
  • The original application was granted, however, the divisional application was rejected on the ground that the Divisional Application filed ought to have disclosed more than one invention in the parent application.
  • Thus, an appeal was filed against this order before the Single Bench of Justice C. Hari Shankar in which it was held that the stand in Boehringer Ingelheim, which held that the doctrine “what is not claimed is disclaimed”, is required to be revisited.

Legal Issues Involved in the Case

Relevance of the Plurality of Invention in Case of Divisional Application under Section 16 of the Patents Act.

Trademark Infringement Claim

The Division Bench of the Hon’ble DHC, presided over by Justices Yashwant Varma and Dharmesh Sharma recently overruled the judgment passed by a Single Bench in Boehringer Ingelheim International GMBH v. The Controller of Patents, in the context of Section 16 of the Patents Act, 1970. This section allows the filing of a divisional application in addition to the invention disclosed in the specifications of the prior patent application.

It was held by the court that it was sufficient for plurality of inventions to be mentioned in provisional or complete specifications and, that the requirement of plurality of inventions being present in the parent application does not apply when a divisional application is filed suo motu. In the proceedings before the Division Bench, the court opined that the doctrine had no application to divisional filing and claim drafting. Furthermore, the court stated that in case of a provisional filing, the claims need not be stated at all. The Bench interpreted that Section 16 enables the filing of a divisional application, provided that the plurality of inventions is disclosed in provisional or complete specifications.

Conclusion

The judgment provided in the case of Syngenta Limited v. Controller of Patents and Designs in C.A. (COMM. IPD-PAT) 471/2022 shows that Divisional patent applications in India have undergone a significant evolution. The said evolution is primarily driven by judicial interpretations of the legislation made by the courts. This would enable the patent applicants to have a clear understanding of the law and would also help the professionals working in this field to better guide their clients in obtaining patents.

Delhi High Court Allows Divisional Application Despite Multiple Inventions

Authors : Nilanshu Shekhar, Rishabh Manocha, Akanksha Anand

Background

  • On 28 Dec, 2005 the Appellant made an application to the Controller concerning an invention about an agrochemical concentrate.
  • The original application was granted, however, the divisional application was rejected on the ground that the Divisional Application filed ought to have disclosed more than one invention in the parent application.
  • Thus, an appeal was filed against this order before the Single Bench of Justice C. Hari Shankar in which it was held that the stand in Boehringer Ingelheim, which held that the doctrine “what is not claimed is disclaimed”, is required to be revisited.

Legal Issues Involved in the Case

Relevance of the Plurality of Invention in Case of Divisional Application under Section 16 of the Patents Act.

Trademark Infringement Claim

The Division Bench of the Hon’ble DHC, presided over by Justices Yashwant Varma and Dharmesh Sharma recently overruled the judgment passed by a Single Bench in Boehringer Ingelheim International GMBH v. The Controller of Patents, in the context of Section 16 of the Patents Act, 1970. This section allows the filing of a divisional application in addition to the invention disclosed in the specifications of the prior patent application.

It was held by the court that it was sufficient for plurality of inventions to be mentioned in provisional or complete specifications and, that the requirement of plurality of inventions being present in the parent application does not apply when a divisional application is filed suo motu. In the proceedings before the Division Bench, the court opined that the doctrine had no application to divisional filing and claim drafting. Furthermore, the court stated that in case of a provisional filing, the claims need not be stated at all. The Bench interpreted that Section 16 enables the filing of a divisional application, provided that the plurality of inventions is disclosed in provisional or complete specifications.

Conclusion

The judgment provided in the case of Syngenta Limited v. Controller of Patents and Designs in C.A. (COMM. IPD-PAT) 471/2022 shows that Divisional patent applications in India have undergone a significant evolution. The said evolution is primarily driven by judicial interpretations of the legislation made by the courts. This would enable the patent applicants to have a clear understanding of the law and would also help the professionals working in this field to better guide their clients in obtaining patents.

DISCLAIMER

The Bar Council of India does not permit the solicitation of work and advertising by legal practitioners and advocates.
This website has been designed only for the purposes of dissemination of basic information on KAnalysis; information that is otherwise available on the internet, various public platforms and social media. Careful attention has been given to ensure that the information provided herein is accurate and up-to-date. However, KAnalysis is not responsible for any reliance that a reader places on such information and shall not be liable for any loss or damage caused due to any inaccuracy in or exclusion of any information, or its interpretation thereof. The reader is advised to confirm the veracity of the same from independent and expert sources.
This website is not an attempt to advertise or solicit clients and does not seek to create or invite any lawyer-client relationship. The links provided on this website are to facilitate access to basic information on KAnalysis, and, to share the various thought leadership initiatives undertaken by it. The content herein or on such links should not be construed as a legal reference or legal advice. Readers are advised not to act on any information contained herein or on the links and should refer to legal counsels and experts in their respective jurisdictions for further information and to determine its impact.
KAnalysis advises against the use of the communication platform provided on this website for the exchange of any confidential, business or politically sensitive information. User is requested to use his or her judgment and exchange of any such information shall be solely at the user’s risk.
KAnalysis uses cookies on its website to improve its usability. This helps us in providing a good user experience and also helps in improving our website. By continuing to use our website without changing your privacy settings, you agree to use our cookies.
Terms of use and Privacy policy