The Madras High Court addressed the scope of Section 16(1) of the Patents Act, 1970 in its recent decision in University College London vs The Assistant Controller of Patents and Designs [CMA(PT) No.45 of 2024].

Section 16(1) permits an applicant to file a further application, referred to as divisional application, at any time before the grant of the parent patent, either on their own/suo-moto (“if he so desires”) or to address an objection raised by the Controller that the claims in the complete specification relate to more than one invention. Such a divisional application must relate to an invention already disclosed in the provisional or complete specification of the parent application. It is necessary that parent application out of which a divisional application is filed, should disclose more than one invention i.e. lack of unity of invention.

In the instant case, the Appellant’s divisional application number 8266/CHENP/2014 was rejected on the ground that it did not satisfy the requirements of Section 16(1). The Controller noted that no objection regarding plurality of invention had been raised during examination of the parent application. Further, interpreting the phrase “if he so desires” narrowly, the Controller took the view that the right to file a divisional application was not unqualified or unconditional right.

The Madras High Court disagreed with the Controller’s restrictive interpretation of Section 16(1). It held that the provision clearly allows an applicant to file a divisional application before the grant of patent under the parent application either voluntarily or in response to an objection relating to plurality of invention, and that these two avenues are independent alternatives, not cumulative requirements. The Court emphasised that the absence of an objection on the ground of plurality does not preclude the applicant from filing a divisional application. The Court clarified that upon receiving a suo-motu divisional application, the Controller is required to assess whether the complete specification of the parent application discloses more than one invention. In the present case, the Court found that the Controller had failed to record any reasons explaining how did the parent application not establish plurality of invention. Upon examining the specifications of both the parent and divisional applications, the Court found that the requirement of plurality of inventions was, prima facie, satisfied.

Accordingly, the Court set aside the order of refusal and remanded the matter to the Patent Office for a fresh examination of the divisional application in light of the foregoing observations.