Syngenta Limited vs. Controller Of Patents And Designs: The Conundrum of Divisional Patent Applications in India

Introduction: The case of Syngenta Limited vs. Controller Of Patents And Designs centers on an appeal filed before the esteemed Delhi High Court, according to Section 117(A) of the Patents Act, 1970, wherein Syngenta Limited challenges the rejection of their divisional patent application by the Deputy Controller of Patents and Designs. The crux of the dispute revolves around the interpretation of Section 16(1) of the Patents Act and the contentious issue of whether a divisional application may be initiated ex proprio motu (on the applicant’s initiative) without the parent application featuring claims related to multiple inventions. Facts: 1.Initial Patent Application (Parent Application) by Syngenta Limited: • Filed on December 28, 2005. • Title: “Agrochemical concentrate comprising an adjuvant and hydrotrope.” • Disclosed three preferred combinations of hydrotrope and oil-based adjuvants. 2.Filing of Divisional Application: • A divisional application was filed on September 15, 2011. • This application covered a specific combination of the three preferred varieties mentioned in the parent application. 3.Grounds for Divisional Application Rejection: • The Deputy Controller rejected the grant of the divisional application. • Reason: The parent application lacked claims related to multiple inventions, which is required by Section 16(1) of the Patents Act. • Notably, this objection should have been raised during the parent application’s First Examination Report (FER). 4.The Rationale for Divisional Application Rejection: • The Deputy Controller deemed the divisional application unsuitable under Section 16 of the Act due to the absence of claims related to multiple inventions. • Consequently, the patentability of the divisional application was rejected under Section 15 of the Act.

Analysis, Legal Interpretations, and Judicial Decisions:

Thoroughly scrutinizing Section 16(1) of the Act, which delineates the conditions for filing a Divisional Application, the Court discerned two scenarios: (1) an applicant may opt to file a Divisional Application voluntarily, and (2) an applicant may submit a Divisional Application in response to an objection raised by the Controller, arising from claims of the complete specification concerning multiple inventions. Acknowledging the vital role of punctuation in statutory interpretation, the Court drew attention to placing a comma after “if he so desires” in Section 16(1). This punctuation suggests that applicants possess the autonomy to initiate a Divisional Application independently without the compulsion of featuring multiple inventions. Conversely, the absence of a comma after “raised by the Controller” indicates that the requirement of the plurality of inventions applies solely to scenarios where the Divisional Application is filed in response to Controller-raised objections. The Court further explained the expressions “relate to” and “disclosed in” in Section 16(1), ascribing distinct significances. While the parent application’s claims ought to pertain to multiple inventions, the Court clarified that the Divisional Application may be filed concerning an invention disclosed in the provisional or complete specifications of the parent application, irrespective of whether it is explicitly claimed. In response to the Appellant’s contention, the Court diverged from the previous precedent set in Boehringer Ingelheim International GMBH v. The Controller of Patents (2022 SCC OnLine Del 3777), wherein the plurality of inventions was required in the parent application’s claims. Instead, the Court endorsed the Appellant’s stance, positing that the requirement of multiple inventions applies exclusively when addressing objections from the Controller.

Conclusion

Syngenta Limited vs. Controller Of Patents And Designs presents a pivotal examination of the statutory provisions encompassing Divisional Patent Applications. The Court’s meticulous scrutiny of punctuation and statutory language promises to clarify the applicability of the plurality of inventions requirement and its implications on filing divisional applications in the Indian legal framework. As the matter awaits adjudication by a Division Bench, the forthcoming decision holds profound consequences for the patent landscape in the country.