The main legal point established in the judgment is that a divisional patent application must be distinct from the parent application, and the reasons for rejection of a patent application should be clearly discernible from the order.

JUDGMENT

Sanjeev Narula, J. (Oral)--Microsoft Technology Licensing, LLC, the Appellant, filed the Indian Patent Application No. 8360/DELNP/2010 on 24th November, 2010 for invention titled "System for Advanced Bi-directional Predictive Coding of Interlaced Video" [hereinafter, "subject invention"]. This application was stylised as a divisional application, stemming from the parent Indian Patent Application No. 487/DELNP/2010 dated 30th January, 2006 [hereinafter, "parent application"]. The subject invention met rejection from Assistant Controller of Patents and Designs on the ground of Sections 16(1), 16(3) and 3(k) of the Patents Act, 1970 vide order dated 28th November, 2019 [referred to as "impugned order"]. Aggrieved, Appellant has preferred the present appeal under Section 117A of the Patents Act.

Subject invention and the divisional application

2. The subject invention pertains to a video compression technique. It is a system of encoding and decoding a current direct-mode macroblock in a current interlaced bi-directionally predicted field, in order to reduce the bit rate for transmission. Traditional video compression methodologies tend to consume significant memory owing to the coding of macroblocks across one to four motion vector modes. The Appellant posits that this technical quandary can be effectively addressed via the subject invention. This innovation minimizes memory utilization by judiciously selecting between motion vector modes and buffering the chosen field motion vectors, ultimately aiding in the prediction of a subsequent frame through bi-directional predictive coding.

3. Originally, the Appellant submitted the parent application encompassing 183 claims. However, following certain objections highlighted in the First Examination Report ["FER"] dated 25th February 2010, claims 155-183 were excised from the parent application on 07th December, 2010. The Appellant thereafter initiated a divisional application for the subject invention comprising of 29 claims.

4. Upon examination of the divisional application, another FER was generated on 11th September, 2017. This report underscored that the divisional application did not introduce a unique invention. Instead, its content echoed claims 155-183 of the parent application, which, by that date, had been declined. Consequently, the application failed to meet the criteria for a divisional application as stipulated in Section 16 of the Patents Act.

5. On 09th February, 2018, the Appellant sought to address the concerns raised in the FER. Subsequently, a hearing notice was dispatched, scheduling a hearing on 17th September, 2019 to address the lingering objections, specifically under Sections 3(k) and 16 of the Patents Act. While the Appellant participated in this hearing, the Controller remained unpersuaded. Consequently, the impugned order was issued under Section 15 of the Patents Act, leading to the refusal of the Appellant's divisional application.

6. In the meantime, the order rejecting the parent application was set aside by this Court vide judgement dated 27th March, 2023 in C.A. (COMM.IPD-PAT) 106/2022. Consequently, upon fresh scrutiny, the parent application has been granted a patent on 25th June, 2023.

The impugned order

7. Relevant portion of the impugned order relating to Section 16 of the Patents Act, reads as under:

"5. It is evident that the applicant had filed 1-183 claims in the First application (Parent application). There was multiple independent set of claims related to only 'A Method and A Computer readable medium storing computer executable instructions'. There was not even a single claim of 'A computing Device or A System for implementing the method claimed.

6. The applicant filed the current application with 1-29 claims by dividing the parent application of his own free will under section 16(1) of The Patent Act. No objection of distinct invention was communicated in FER of parent application from the office (Indian Patent Office).

7. The agen