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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Syngenta Limited - Appellant
Versus
Controller of Patents And Designs - Respondent
C.A.(COMM.IPD-PAT) 471 of 2022
Decided On : 17-10-2023
Divisional Application - Patent Law - The court held that the requirement of 'plurality of inventions' should be tested based upon the disclosure made in either the provisional or complete specifications, and remanded the Divisional Application for reconsideration in view of this finding.
Fact of the Case:
The court rejected the Divisional Application for a product on the ground that the claims in the Parent Application did not contain any claim relating to plurality of distinct inventions. The Division Bench held that the requirement of 'plurality of inventions' should be tested based upon the disclosure made in either the provisional or complete specifications.
Finding of the Court:
The impugned order was quashed and set aside, and the Divisional Application was remanded to the concerned officer for de novo consideration in view of the observations and findings contained in the judgment dated 13 October 2023 passed by the Division Bench of this Court.
Issues: Rejection of Divisional Application based on the ground of claims in the Parent Application and the interpretation of the requirement of 'plurality of inventions'.
Ratio Decidendi: The requirement of 'plurality of inventions' should be tested based upon the disclosure made in either the provisional or complete specifications.
Final Decision: The appeal was allowed, and the Divisional Application was remanded for reconsideration by the concerned officer.
ORDER (Oral)
C. HARI SHANKAR, J.
1. The impugned order dated 11 October 2017 rejects the Divisional Application No. 7059/DELNP/2011 dated 15 September 2011, enumerating from parent Application No. 6114/DELNP/2005 dated 28 December 2005 for a product "Agrochemical concentrate comprising an adjuvant and a hydrotrope" on the ground that the claims in the Parent Application did not contain any claim relating to plurality of distinct inventions. As such, on the ground that the claims in the Divisional Application travel beyond the claims in the Parent Application, the Divisional Application was rejected.
2. By judgment dated 13 October 2023, whereby the Division Bench of this Court has decided an issue referred by me, as I found myself unable to agree with the view expressed by a coordinate Bench in Boehringer Ingelheim International GMBH v. The Controller of Patents, 2022 SCC OnLine Del 3777, the Division Bench has held that the requirement of "plurality of inventions would have to be tested based upon the disclosure made in either the provisional or complete specifications".
3. In that view of the matter, Mr. Pandey, learned Counsel for the respondent- Controller of Patents and Designs acknowledges that this matter would have to be remanded to the competent officer in the office of Controller of Patents and Designs to reconsider the appellant's Divisional Application No. 7059/DELNP/2011 dated 15 September 2011 anew, in the light of the judgment dated 13 October 2023 passed by the Division Bench of this Court in the present case.
4. Accordingly, the impugned order is quashed and set aside. Divisional Application No. 7059/DELNP/2011 dated 15 September 2011 is remanded to the concerned officer in the office of the Controller General of Patents and Designs for de novo consideration in view of the observations and findings contained in the judgment dated 13 October 2023 passed by the Division Bench of this Court in the present case.
5. This appeal stands allowed accordingly.
6. The concerned officer is requested to reconsider the matter within one month and take a decision after hearing the parties, for which purpose, the appellant may appear before the concerned officer on 26 October 2023.
7. Let a copy of this order be provided dasti to learned Counsel for both sides.
The requirement of 'plurality of inventions' should be tested based upon the disclosure made in either the provisional or complete specifications.
A divisional patent application must be filed before the grant of a parent application; filing post-grant is impermissible under Section 16(1) of the Patents Act.
The main legal point established in the judgment is the importance of accurate references to prior art documents and the need to ensure a fair and accurate consideration of patent applications.
The main legal point established in the judgment is the requirement for a detailed analysis of the existing knowledge and how the subject invention lacks inventiveness in light of the prior art when ....
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 ....
A patent adjudication must be supported by a reasoned order to ensure fairness and facilitate judicial review.
The requirement of associated hardware being novel and inventive is no longer a ground for rejection of patent applications for computer software.
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