A divisional application under the Patents Act requires the existence of more than one invention in the parent application; failure to demonstrate plurality results in denial.

JUDGMENT :

MANISH PITALE, J.

1. Heard learned counsel for the parties.

2. By this petition, the petitioners have challenged decision / order dated 08.09.2021 passed by respondent No.2 - Controller of Patents. By the said decision, the respondent No.2 has refused to proceed further with a divisional application moved on behalf of the petitioners under the provisions of the Patents Act, 1970 (hereinafter referred to as the ‘Patents Act’).

3. In the present case, the petitioners filed their application for grant of patent on 23.06.2017 in respect of a Chlorophyllin composition concerning treatment of kidney disease patients for decrease in serum creatinine level and a corresponding increase in hemoglobin level. The said application was in active consideration and during this period, on 12.05.2020, the petitioners filed divisional application for Chlorophyllin composition, according to the petitioners, without restricting the same to any specific use and also without limiting the same for treatment of kidney disease patients. The respondent No.2 issued the First Examination Report (FER) granting last date for response to the same as 06.07.2021. The petitioners filed their reply to the FER on 03.07.2021, stating in detail as to why the divisional application of the petitioners could not be objected to in the manner indicated by the respondent No.2.

4. In this backdrop, on 07.07.2021, the respondent No.2 issued hearing notice specifically stating two objections in respect of the divisional application filed on behalf of the petitioners. The hearing was conducted on 10.08.2021 and thereafter, on 21.08.2021, the petitioners submitted their written submissions, again dealing with the objections raised on behalf of the respondent No.2 in detail and indicating as to why according to the petitioners, the statutory requirements of the Patents Act were duly satisfied and that the divisional application deserved to be granted.

5. Thereafter, on 08.09.2021, the respondent No.2 issued the impugned decision holding that the divisional application submitted on behalf of the petitioners did not satisfy the requirements of the Patents Act, particularly Sections 10(5), 16 and 46(2) thereof. On this basis, the respondent No.2 refused to proceed further with the divisional application. The petitioners are aggrieved by the said order.

6. Mr. Nitesh Bhutekar, learned counsel appearing for the petitioners submitted that the respondent No.2 failed to appreciate the true scope of the relevant provisions of the Patents Act and in that context, the contents of the first application for grant of the aforesaid patent and the contents of the divisional application filed subsequent thereto. It was submitted that clear distinction could be made out between the two applications, indicating the distinct inventions and that, in such a situation, on a proper reading of the definition of the term 'invention' under Section 2(1)(j) of the Patents Act and the true purport of Section 10(4)(c) and (5) read with Section 16 thereof, the respondent No.2 ought to have allowed the divisional application. Attention of this Court was specifically invited to the amended application at exhibit-H to the present application, particularly to the claims made in the amended application, to highlight the distinction and differences with the first application for grant of patent in respect of Chlorophyllin composition filed on behalf of the petitioners. It was submitted that a proper appreciation of such differences would clearly show that the statutory requirement was satisfied and that therefore, the impugned order deserved to be set aside. It was submitted that the divisional application ought to have been allowed and that the respondent No.2 erred in refusing to exercise power, as a statutory authority, on a proper reading of the provisions of the Patents Act, particularly Section 16 thereof.

7. On the other hand, Mr. Yashodeep Deshmukh, learned counsel appearing for the respondents submitte