Boehringer Ingelheim International GMBH v. The Controller of Patents & Anr.

Relevant Acts and provisions

Patents Act, 1970

Section 10(5)Section 16Section 59

Provisions considered: Section 16 of the Patents Act, 1970, on divisional applications and plurality of inventions.

Brief facts

Boehringer Ingelheim filed a divisional application for a medicament of a DPP IV inhibitor, carved out of claim amendments the Controller had indicated it would reject in the parent application. After the parent application was refused under Section 15 for exceeding the scope of the original claims, the Controller also refused the divisional application under Section 16, holding that the parent's claims disclosed no plurality of distinct inventions.

Issues before the Court

1. Can a divisional application be maintained under Section 16 where the claims of the parent application do not themselves disclose more than one invention?
2. Must the plurality of inventions be found in the parent's claims, or does disclosure in the specification suffice?

Court's findings

The Court held that a divisional application under Section 16 must arise from a parent application whose claims disclose a plurality of inventions; since the invention itself resides in the claims rather than the specification, the existence of multiple inventions must be gleaned from the claims of the parent application.

The Court found that the parent application's claims were confined to use claims for DPP IV inhibitors, whereas the claims sought in the divisional application were new product claims for medicament combinations never claimed in the parent; permitting the divisional would allow the appellant to claim exclusivity in subject matter that was never part of the original claims.

Applying the principle that what is not claimed is disclaimed, the Court held that disclosure of an invention solely in the specification, without a corresponding claim in the parent application, cannot support a divisional filing under Section 16.

Subsequent history: Overruled by a Division Bench of the Delhi High Court in Syngenta Limited v. Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 471/2022, decided 13 October 2023, which held that the plurality of inventions need only be disclosed in the provisional or

Decision

Appeal dismissed; the Controller's refusal of the divisional application under Section 16 was upheld.

Keywords

Claim Construction Divisional Application Patent Prosecution Plurality Of Inventions Section 16