The filing of the divisional application at the behest of the Applicant on its own is a very important and tricky issue that has often been dealt with by the erstwhile Intellectual Property Appellate Board (IPAB) as well as by the various Court in India under The Patents Act, 1970. Several judgments make it clear to an Applicant as to when a divisional application can be filed on its own by the said Applicant.
Affirming the well-established principle, in a very recent judgment by a single bench of the Delhi High Court, it was held that a divisional application cannot be filed when there is no “plurality of inventions” in the claims of the parent application.
A “plurality of inventions” has to be seen from the claims of the parent application. Obviously, the claims, in turn, have to be based on the disclosure in the specification. However, if the invention is not contained in the claims of the parent application, the divisional application cannot be permitted to be filed solely based on the disclosure in the specification. Further, a divisional application cannot be considered as a remedy for the refused amendment in claims of parent application that does not fall under the scope of claims as filed with the first mentioned application.
Facts of the Case – Boehringer Ingelheim International Gmbh v. The Controller Of Patents & Anr.
In the present case, the Appellant (Boehringer Ingelheim International GMBH), had filed a patent application titled ‘Use of DPP IV Inhibitors’ in the Indian Patent Office on November 14, 2008, with a total of 18 claims. A First Examination Report was issued on 24th March 2014 by the Deputy Controller of Patents, comprising objections such as lack of novelty, inventive step, etc. A reply to the First Examination Report was filed by the Applicant on March 24, 2014, along with an amended set of claims wherein the Applicant sought to delete all claims except claims 14, 15 & 15A.
Thereafter, on March 20, 2015, and February 18, 2016, two Form-13 were filed by the Applicant seeking two further (voluntary) amendments. In the year 2015, the Applicant sought to expand from three claims to claims 1 – 11, and in the year 2016, the Applicant sought to amend the claims to 1 to 15, i.e. added four new claims. On 5th July 2017, a hearing notice was issued based on the claims filed on March 24, 2014 (along with FER Response), rejecting the amendments of 2015 and 2016, as amendments carried out in claims were beyond the scope of claims as on record before the amendments. Pursuant to this hearing notice, the objections raised were contested by the Applicant. The hearing was held in August 2017 and prior to the rendering of the decision on January 4, 2018, the Applicant sought to file a divisional application on September 4, 2017, by creating an amalgam of claims 1 to 11 (amended claims of 2015) and Claims 1 to 15 (amended claims of 2016).
The Controller passed the decision that the amendments filed in 2015 and 2016 cannot be taken on record and refused the Application under Section 15 of the Patents Act, 1970, citing the reason that the amended claims 1-11 as filed on 23/03/2015 relates to a medicament combination of a DIPP IV inhibitor with metformin and the amended claims as filed on 19/02/2016 further contains 4 new claims (claims 12-15), in addition to claims as filed on 23/03/2015, which relate to a medicament combination of a DIPP IV inhibitor with telmisartan.
The scope of protection of originally filed claims, i.e. use of DPP IV inhibitor of formula I or formula II alone or in combination with other active substances, cannot be extended to the protection of a medicament combination of a DIPP IV inhibitor with metformin/telmisartan as such a change in contents of amended claims does not wholly fall within the scope of originally filed claims. Further said amendments cannot be considered to be done by way of disclaimer, correction, clarification, or explanation as there is a clear change in the category of claims wherein “use claims” were amended to “product claims”.
After this decision was rendered, in so far as the pending divisional application was concerned, the FER was issued, a response was filed to the said FER and thereafter a pre-grant opposition also followed qua this divisional application. The reply statements, etc. were completed in the pre-grant opposition and after hearing the pre-grant opponent and the Applicant, by the impugned order dated March 25, 2022, the divisional application was refused for the reason that the division itself could not have been permitted as the amendments were rejected in the parent application. Since the current claims had been already examined and refused, the same claims cannot be allowed in another application.
Issues before the Court:
- Whether the use claims as originally filed could have been amended into product claims by the Appellant?
- Whether divisional applications can be filed for claims when such claims were not part of the claims in the parent application?
- Whether the divisional Application can be filed voluntarily on the ground “if he so desires” mentioned in Section 16(1) of Patent Act, 1970?
- Whether failure to get a patent on a parent Application is an eligible criterion for divisional Application?
Relevant Rules and/or Law:
The first issue before the court is pertaining to Section 59(1) of the Act, which provides that an amendment of an application, specification or any document related thereto would be permissible only if the following conditions are satisfied:
(i) The amendment has to be by way of disclaimer, correction, or explanation;
(ii) The amendment has to be for the purpose of incorporation of actual facts; and
(iii)(a) The effect of the amendment ought not to be to amend the specification to claim or describe any matter which was not disclosed in substance or shown in the originally filed specification; and
(iii)(b) The amended claims have to fall within the scope of claims as originally filed.
Thus, for an amendment to be allowed all conditions have to be satisfied. Any amendment falling foul of (i), (ii), (iii)(a), or (iii)(b) above cannot be allowed.
Further, for your reference, we quote hereinbelow the relevant sections relating to divisional applications:
“Section 10. Contents of specifications.-
(1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject matter to which the invention relates.…
(4) Every complete specification shall –
(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed.
(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct, and shall be fairly based on the matter disclosed in the specification
(7) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.”
“Section 15. Power of Controller to refuse or require amended applications, etc., in certain cases.- Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuses the application on failure to do so.”
“Section 16. Power of Controller to make orders respecting the division of application.-
(1) A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter, not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.
(3) The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.”
Grounds for Filing a Divisional Application
“A divisional application can be filed either by the applicant (suo-moto), if he so desires, or to remedy the objection raised by the Controller on the ground of plurality of invention. In either case, the existence of a plurality of inventions in the parent application is the sine qua non for a divisional application. The very ground to accept divisional application is “that the claims of the complete specification relate to more than one invention”.
Section 16(1) of the Act illustrates that an applicant can file for a further application if the complete specification is related to more than one invention. Before the grant of a patent that has been already been filled for which is referred to as the first mentioned application. “If he so desires” is not unconditional and it does not give the applicant an unjustified liberty to file a divisional application even when there are no multiple inventions in the parent application. A divisional has to satisfy the test of Section 16 of the Act which means that more than one invention did not contain any plurality of invention under Section 10(5) of the patent act 1970.
Further, the divisional application should not include any claim already claimed in the parent application. Moreover, the matter disclosed in the divisional application should not include any matter not disclosed in substance in the complete specification of the parent application.” 
The claims of divisional application shall have their route in the first mentioned (parent) application. This is true even for divisional to the divisional application as well. If any claim is held to be non-patentable due to any other provisions of the law such as the requirements of Section 3 or otherwise, it should not be proper for filing a divisional application for such claims.
Contentions of the Appellant
The Appellant contended that all the three conditions of Section 59 are fulfilled by the amended claims submitted by the Applicant as the amendments were carried out by way of correction and explanation. Further, as the medicament combinations are clearly disclosed in the specification, the amendments pertained to the incorporation of actual facts and do not fall outside the scope of the unamended specification.
Observation and Decision of the Court
With regard to the issue of whether the amendments are allowed, the court observed that the scope of protection of originally filed claims, i.e. use of DPP IV inhibitor of formula I or formula II alone or in combination with other active substances, cannot be extended to the protection of a medicament combination of a DIPP IV inhibitor with metformin/telmisartan as such change in contents of amended claims does not wholly fall within the scope of originally filed claims. Further, the entire specification is directed for use of the compound, but nowhere in the specification relates to the medicaments.
This is also true that the claims, in turn, have to be based on the disclosure in the specification. However, if the invention is not contained in the claims of the parent application, the divisional application cannot be permitted to be filed solely on the basis of disclosure made in the specification, in respect of alleged inventions. If applicants are permitted to file such divisional applications based on the disclosure in the complete specification, without such inventions being claimed in parent applications, it would defeat the fundamental rule of patent law i.e. ‘what is not claimed is disclaimed’. Thus, the divisional application would be maintainable only when the claims of the parent application disclose a “plurality of inventions”.
Further, the Court held that non–allowance of the amended claims followed by refusal under Section 15, i.e. failure to get patent on the parent application is not eligible criteria for divisional application. It is very important to note that in case the amended claims are allowable in the present application then the same claims could have been allowed in the parent application itself if meeting all criteria.
The order also clearly indicates original and amended claims lack novelty and obviousness. “The Parent refusal order has already been considered and examined during prosecution of the parent application. Thus, the claims of the divisional application absolutely do not have any merits for the purpose of divisional application and divisional application of a refused parent application has been refused.”
Analysis and Conclusion
The provision under Section 16 enables the Applicant to divide the Patent Application and file a divisional application either by the applicant (suo-moto), if he so desires, or to remedy the objection raised by the Controller on the ground of plurality of invention. However, applicants often interpret this statement as a ‘divisional application can be filed voluntarily.’ The fact should be taken into consideration that a divisional Application could be maintainable only when the claims of the parent application disclose “a plurality of inventions”. Further, the claims of the divisional application should not disclose any matter already disclosed in the claims of the parent Application, rather it should be within the scope of the originally filed claims of the parent Application.
Claims falling out of the scope of originally filed claims but within the scope of the complete specification of the parent, applications are not allowed.
The important takeaways from this particular case can be ascertained as follows:
- An amendment to alter the scope of the claims is not allowed.
- The option of filing a divisional application is available only when there is a multiplicity of inventions in the claims and a disclosure of the same in the description. Disclosure alone would not suffice for filing of a divisional application and the claimed subject matter in a divisional application must be present in the claims of the parent application.
- Amendment must be carried out carefully to avoid any loss of claimed subject matter which the applicant would like to retain at a later stage during prosecution.
- Filing of divisional application without a multiplicity of inventions and devoid of any merits may incur further cost to Applicant.
To conclude, this case law somewhat clears the guidelines for filing divisional applications such that, divisional applications cannot be used as a tool to deceive the authorities, and refused amendment in claims cannot be filed and claimed as a separate divisional application.
 C.A. (COMM.IPD-PAT) 295/2022 & I.As.10369-70/2022
 L.G. Electronics v. Controller of Patents (2011) – OA/6/2010/PT/KOL