In a recent order dated 27^th July 2023, in Syngenta Limited versus The Controller of Patents & Designs, the Delhi High Court (DHC) examined the issues relating to maintainability of a divisional application filed under Section 16 of the Patents Act. The DHC expressed disagreement with the finding contained in the judgement Boehringer Ingelheim International GMBH v. The Controller of Patents & Anr.(Boehringer) that “if the invention is not contained in the claims of the parent application, the divisional application cannot be permitted to be filed solely on the basis of disclosure made in the specification”.

The Court disagreed with Boehringer and held that Section 16(1) of the Patents Act envisages two circumstances in which a divisional application can be filed – i) a divisional application can be filed by the applicant suo moto, or ii) a divisional application can be filed to remedy an objection raised by the Controller relating to unity of invention. The Court further held that. the requirement of the claims of the complete specification relating to more than one invention apply only where the divisional application is filed with a view to remedy an objection raised by the Controller. If, however, a divisional application is being filed suo moto, this requirement, prima facie, does not apply.

The Court found this interpretation to be in tune with:-

1. The exact structure of Section 16(1): Section 16 incorporates a comma after “if he so desires”, and there is no such comma after “raised by the Controller”.
2. Article 4(G) of the Paris Convention, that also envisages two distinct circumstances in which a divisional application may be filed. Article 4 (G)(1) envisages such an application being filed on the FER revealing that the original application contains more than one invention. Article 4(G)(2) envisages suo moto filing of a Divisional Application by the parent applicant. 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).
3. Section 16(1) concludes with the words “filed a further application in respect of an invention disclosed in the provisional or complete specifications already filed in respect of the first mentioned application (parent applicant).

The Court held that prima facie, it may be questionable as to whether the plurality of inventions, assuming plurality of inventions to be a sine qua non for filing a divisional application is required to be contained in the claim of the parent application itself, or whether it would not be sufficient if the plurality of inventions is contained in the disclosures in the parent application.

Since the Hon’ble Justice did not agree with the findings of the co-ordinate Bench in Boehringer, this matter has now been referred to the Chief Justice for constituting an appropriate Division Bench to examine the issues relating to maintainability of divisional application.