Syngenta Limited v. Controller of Patents and Designs

10. Mr. Sushil Kumar Pandey, learned Counsel appearing for the office of the Controller General of Patents, places reliance on the judgment of a coordinate Bench of this Court in Boehringer Ingelheim International GMBH v. The Controller of Patents[3]

31. Using this understanding of how an invention is ascertained in a patent application, it is clear that under Section 16 of the Act, the “plurality of inventions” should clearly exist in the claims of the original parent application and within the scope of the specification of the parent application. Therefore, under Section 16, the question of whether the claims of the complete specification relate to more than invention i.e., 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 on the basis of disclosure made in the specification, in respect of alleged inventions. If applicants are permitted to file such divisional applications on the basis of 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 claim is disclaimed’. Similarly, Section 59 also makes it clear that amendments beyond the scope of the specification and claims would not be permissible. This is the settled legal position, as also held by this Court in Nippon A&L Inc. v. The Controller of Patents[4]

11. There can be no gainsaying of the fact that the impugned order, decided on 5th July, 2022]. Thus, the divisional application would be maintainable only when the claims of the parent application disclose “plurality of inventions”. (Italics supplied; underscoring in original) 2022 SCC OnLine Del 1909 is in tune with the observations and findings contained in the judgment in Boehringer Ingelheim[3].

12. Mr. Anand, however, submits that Boehringer Ingelheim[3] “(1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any. (2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.” Mr. Anand submits that, thus, the Paris Convention envisages submission of a divisional application by an applicant either in the event of the examination of the parent application by the authority revealing that it contains more than one invention, or on his own initiative. The stipulation of the parent application containing more than one invention does not find any place in Article 4(G)(2), which deals with suo moto filing of divisional applications. Section 16(1) of the Patents Act, submits Mr. Anand, is in sync with Article 4(G) of the Paris Convention. Analysis may require a revisitation, as the findings of the Court therein appear to be contrary to the express statutory provisions. He has also placed reliance, in this context, on Article 4(G) of the Paris Convention for Protection of Industrial Property, which reads thus:

13. Having heard Mr. Anand, learned Counsel for the appellant and having perused the relevant statutory provisions, I must regretfully express my inability to agree with the view expressed by my learned sister in her judgment in Boehringer Ingelheim[3] 14., though I hold her expertise in the domain of intellectual property in the highest regard. 14.[1] Accepting the interpretation placed on Section 16(1) in Boehringer Ingelheim Is the requirement of the parent application containing a plurality of inventions applicable even where the divisional application is filed suo motu by the applicant, without any objection raised by the Controller? “(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 would, in my opinion, require us to rewrite the provision to read thus: claims 14.[2] To my mind, Section 16(1) of the Patents Act clearly envisages two circumstances in which a Divisional Application can be filed. A Divisional Application may be filed by the applicant of the parent application, if he so desires. The second circumstance in which a already filed in respect of the first mentioned application.” We would, therefore, have to add a comma after the words “raised by the Controller” and replace the words “provisional or complete specification” with the word “claims”. Why, would become apparent hereinafter. Divisional Application is filed, is where the applicant seeks to remedy an objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention. 14.[3] I find this interpretation to be more in tune with the exact structure of Section 16(1), as though the section incorporates a comma after “if he so desires”, there is no such comma after “raised by the Controller”. If such a comma had been contained in the section after the words, “raised by the Controller”, then it might have been possible to hold that the requirement of the claims of the complete specification relating to a plurality of invention, was applicable both to cases where the Divisional Application was filed suo moto as well as where the Divisional Application was filed on an objection raised by the Controller. Where there is no comma after the words “the objection raised by the Controller”, however, it is plain that the requirement of the claims of the complete specification relating to plurality of invention is only relatable to the objection raised by the Controller. 14.[4] The oft-repeated aphorism that judgments cannot be read like statutes is a recognition of the equally settled position that statutes have to be read as they stand. Punctuation, in a statute, is often determinative of its construction. In its urge to accord, to a statutory provision, what the Court feels the legal position ought to be, the Court cannot ignore the syntactical structure in which the legislature has crafted the provision. While it is true that Courts have, of late, accorded primacy to the principle of purposive interpretation of statutory provisions[5], the Court cannot, in doing so, rewrite the statute. In Indore Development Authority v. Manoharlal[6] 14.[5] The importance of a comma – or rather its absence – stands underscored in the judgment of the Supreme Court in Commissioner of Central Excise v. Indian Petrochemicals Corporation Ltd, while stressing on the importance of the placement of a colon in the statutory provision, the Supreme Court observed that there were “several other decisions, which support the proposition that punctuation marks, especially colons have a significant role in interpretation of words in a statute.” “In the aforesaid Sl. No. 24 of Notification No. 5/2000, there is no comma after the words ‘gaseous hydrocarbons’. Therefore, the expression ‘other than’ appearing after the words ‘gaseous hydrocarbons’ and before the words ‘natural gas’ would qualify only the words ‘natural gas’.” in which, while dealing with a Notification which granted partial exemption from payment of Central Excise duty to “liquefied petroleum gases and other gaseous hydrocarbons other than natural gas, ethylene, propylene, butylene and butadiene”, the Supreme Court, speaking through A.K. Sikri, J., approved, in its entirety, the following finding of the Customs, Excise and Service Tax Appellate Tribunal while interpreting the Notification: In Mohd Shabir v. State of Maharashtra[8] Refer Shailesh Dhairyawan v. Mohan Balkrishna Lulla, (2016) 3 SCC 619 and Richa Mishra v. State of Chhatisgarh, (2016) 4 SCC 179

(1979) 1 SCC 568, the Supreme Court, dealing with the expression “manufacture for sale, or sell, or stock or exhibit for sale, or distribute any drug or cosmetic, except under, and in accordance with the conditions of, a licence issue for such purpose under this Chapter”, figuring in Section 18(c) of the Drugs and Cosmetics Act, 1940, emphasized the effect of the absence of a comma after the words “stocks or exhibits for sale” thus, in para 4 of the report:

14.[6] That said, however, it is equally true that the Court should not allow itself to be swayed by punctuation in a statute where blind adherence would result in the statute being interpreted in a manner which is contrary to the plain legislative intent. In the present case, however, there is no reason to hold that, if the absence of the critical comma after the words “by the Controller” in Section 16(1) is accorded due importance, the statutory intent would be defeated. Rather, such a construction would, as I would presently observe, bring Section 16(1) in tune with the parallel provision in the Paris Convention, as Mr. Anand correctly submits. 14.[7] Plainly grammatically read, the requirement of the claims of the complete specification relating to more than one invention apply only to the second of these exigencies, i.e. where the Divisional Application is with a view to remedy an objection raised by the Controller. In other words, if the applicant is seeking to file a Divisional Application to remedy of objection raised by the Controller, such an application would be maintainable only if the Controller’s objection is on the ground that the claims of the complete specification related to more than one invention. If, however, the Divisional Application is being filed suo moto “if he so desires”, this requirement, prima facie, does not apply. 14.[8] This interpretation is also in line with Article 4(G) of the Paris Convention, which does not appear to have brought to the notice of the Coordinate Bench in Boehringer Ingelheim[3]

14.10 As such, Mr. Anand appears to be correct in his submission that the requirement of a plurality of inventions being present in the original application would apply only to cases where the Divisional. Article 4(G) also envisages two distinct circumstances in which a divisional application may be filed. Article 4(G)(1) envisages such an application being filed on the FER revealing that the original application contains more than one invention. Article 4(G)(2) envisages suo moto filing of a Divisional Application by the parent applicant. The provision is clear and categorical in incorporating the requirement of plurality of inventions in the application only with respect to Article 4(G)(1). No such requirement is contained in Article 4(G)(2). 14.[9] Prima facie, the decision of the legislature not to incorporate a comma after “raised by the Controller” in Section 16(1) appears to be with a view to bring the provision in sync with Article 4(G) of the Paris Convention. Application is filed to remedy an objection raised by the Controller, and would not apply where the Divisional Application is filed suo moto by the applicant.

15. 15.[1] The second objection raised by Mr. Pravin Anand also seems to be in tune with the statutory intent. Mr. Anand submits that assuming that the requirement of a plurality of inventions was necessary for a Divisional Application to be filed, that plurality could also be contained in the complete specifications accompanying the claims in the parent application, and was not necessarily required to be contained in the claims themselves. Assuming the parent application is required to contain a plurality of inventions, do the plurality of inventions have to be contained in the claims in the parent application or is it sufficient if they are disclosed in the disclosures forming part of the complete specifications in the parent application? 15.[2] Section 16(1) uses two distinct expressions; “relate to” and “disclosed in”, and the significance of the use of these two distinct expressions cannot be overlooked. 15.[3] Where the Controller raises an objection on the ground that the claims of the complete specification in the parent application relate to more than one invention, the applicant may file a further application in respect of an invention disclosed in the provisional or complete specifications. While, therefore, the claims in the parent application must relate to a plurality of inventions – assuming, as the impugned order holds, this requirement to indeed be a sine qua non for a divisional application to be maintainable – it would suffice if the divisional application is filed in respect of an invention (forming part of the plurality) disclosed in the provisional or complete specifications. The provision does not, as it stands, appear to require the plurality of inventions to form part of the claims in the parent application. 15.[4] Applying this principle to the case at hand, therefore, Claim 1 in the parent application relates to a plurality of inventions, as it would cover all cases where the single continuous phase comprises an oil based adjuvant and a hydrotrope. There could, therefore, be a multitude of adjuvant-hydrotrope combinations which could be encompassed by the claim. Three such combinations were disclosed in the complete specifications accompanying the claim. The divisional application of the appellant was filed in respect of one of such adjuvant-hydrotrope combinations and, therefore, “in respect of an invention disclosed in the provisional or complete specifications”. 15.[5] To my mind, the application could not have been rejected solely on the ground that the plurality of inventions was not specifically contained in the claim, and only in the disclosure contained in the complete specifications. Though Boehringer Ingelheim[3] supports this view, the interpretation would, in my opinion, be plainly contrary to the words used in Section 16(1) and cannot, therefore, prima facie sustain. 15.[6] In this context, Mr. Anand has also cited Section 10(4) of the Patents Act read with Form 2 accompanying the Patents Act in the Patent Rules which sets out the form both of provisional and complete specifications. In respect of Serial No. 5, which deals with claims, the form specifically states thus:

Mr. Anand has also invited my attention in this context to the Manual of the Patent Office Practice and Procedure which, in Clause 05.02.02, specifically states thus: “Contents of Provisional Specification a) A Provisional Specification shall essentially contain the title and description of the invention and shall start with a preamble “The following Specification describes the invention.” Claims may not be included in the Provisional Specification as the purpose of filing a Provisional Specification is to claim a priority date.” Thus, submits Mr. Anand, a provisional application is not required to contain claims. Section 16(1) of the Patents Act permits a divisional application to be filed even in respect of an invention disclosed in the provisional specification filed in respect of the parent application. If the requirement of plurality of inventions being claimed in the parent application were to apply, therefore, no divisional application could ever be filed where the parent application contains only provisional specifications, as provisional specifications are not to include claims. Inasmuch as Section 16(1) permits divisional applications to be filed in respect of inventions disclosed in provisional or complete specifications in the parent application, the specification of plurality of inventions in the claim can never be an imperative. 15.[7] I find substance in the submission. It is apparently for this reason that Section 16(1) concludes with the words “filed a further application in respect of an invention disclosed in the provisional or complete specifications already filed in respect of the first mentioned application”. As such, the invention in respect of which the Divisional Application is filed is required to be disclosed only in the provisional or complete specification filed in respect of the parent application. The view, expressed in Boehringer Ingelheim[3]

(i) Does the requirement of a plurality of inventions being contained in the parent application, in order for a Divisional to the effect that the plurality of inventions must form part of the claims in the parent application, therefore, in my view, requires a revisitation.

16. The Coordinate Bench, in the paragraphs extracted hereinabove, however, has taken a view that (i) a divisional application can be filed only if the claims in the parent application relate to more than one invention and (ii) the plurality of inventions is required to be contained in the claims in the parent application and it is not sufficient if the plurality of inventions are to be found in the complete specifications accompanying the claims in the parent application.

17. As, for the reasons elucidated hereinabove, I am not able to convince myself that this is the correct position, I deem it appropriate to refer the following questions for consideration by a Division Bench of this Court to be constituted by and subject to orders of Hon’ble the Chief Justice: Application to be maintainable, apply even where the Divisional Application is filed by the applicant suo moto, and not on the basis of any objection raised by the Controller?

(ii) Assuming that the requirement of a plurality of inventions in the parent application is necessary for a Divisional Application to be maintainable, does the plurality of inventions have to be reflected in the claims in the parent application or is it sufficient if the plurality of inventions is reflected in the disclosures in the complete specifications accompanying the claims in the parent application?

18. The Registry is directed to place this matter before Hon’ble the Chief Justice for constituting an appropriate Division Bench to examine the aforesaid issues and return its view thereon, as they affect a large number of cases.

C.HARI SHANKAR, J JULY 26, 2023 rb