Legal Update  

Greetings from Talwar Advocates! 

We would like to bring to your notice about the recent order passed by the Delhi High Court clarifying the scope of Divisional Patent Applications. 

The Division Bench of the Delhi High Court in Syngenta Limited v. Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 471/2022 adjudicated upon the scope of divisional patent application under the Patent Act, 1970 (Section 16) after the Single Judge held that if the plurality of inventions is not contained in the claims of the parent application, the divisional application would not be maintainable. The Single Judge also observed that the issue of plurality of invention in the original claim would be a restrictive condition which would only apply in a situation where the divisional application is filed based on an objection raised by the Controller and not when a divisional application is filed by the applicant suo moto.  Therefore, the two questions proposed to the Division Bench were: 

  1. Is the condition of plurality of inventions in the parent application, applicable even where the divisional application is filed by the applicant suo moto, and not based on any objection raised by the Controller? 
  1. Assuming that the requirement of plurality is necessary for a divisional application to be maintainable, does the plurality have to be reflected in the claims in the parent application or is it sufficient if the plurality is reflected in complete specification? 

On the first question the Division Bench observed that filing of a divisional application, whether suo moto by the Applicant or in response to an objection by the Controller must be assessed on the same basis. Meaning thereby, that a divisional application can be culled out of the parent application of the applicant’s own accord or upon directions from the Controller. 

Opining on the second question the Division Bench held that plurality of inventions is necessary to be filed in a divisional application however, plurality need not be restricted to the claims and can be ascertained from the provisional or complete specification. Meaning, any disclosure whatsoever, whether in claims or in the specification, can for a basis for the divisional application. 

Feel free to reach out for any clarification. 

Team Talwar Advocates