In the realm of patents, the primary rule is that a single patent application should typically cover only one invention or a closely related group of inventions leading to a single inventive concept. However, in situations where a single application ends up encompassing more than one distinct invention then divisional applications emerge as a crucial solution. In India, divisional patent applications are governed by Sections 16, 10(5), and 7(1) of the Indian Patents Act, 1970. The proviso of Section 16(1) of the Patents Act, 1970 reads as “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 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”. A divisional application may be filed any time before the grant or refusal of its parent application i.e., only during the pendency of the parent application.
A recent judgment in the matter of Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs1 dated 11th August 2023 (corrected & released on 23rd August 2023) by the single judge bench of Justice Sanjeev Narula, in Delhi High Court, adjudicates the challenge raised by the Appellant by way of civil appeal against the rejection of a divisional patent application by Controller of Patents under Sections 16(1), 16(3) and 3(k) of the Patents Act, 1970 (hereinafter “Act’) vide order dated 28th November, 2019. The verdict of the High Court is based on the maintainability of divisional application as per Section 16 of the Act, particularly those where similar claims as that in parent application are filed.
The Appellant/Applicant, Microsoft Technology Licensing, LLC, filed a divisional patent application bearing no. 8360/DELNP/2010 (hereinafter “divisional”) dated 24th November 2010 and sought patent protection for “System for Advanced Bi-directional Predictive Coding of Interlaced Video“. This divisional application stemmed from the parent Indian Patent application bearing no. 487/DELNP/2006 (hereinafter “parent”) which is a National Phase PCT Application filed on 30th January 2006. The subject invention of the divisional pertains to a video compression technique which relates to techniques and tools for interlaced video coding and decoding. The Appellant originally submitted the parent application encompassing 183 claims and after certain objections were highlighted in the First Examination Report(FER) dated 25th February 2010, claims 155-183 were removed from the parent application on 07th December 2010. The Appellant thereafter initiated to file a divisional application for the subject invention comprising 29 claims(i.e. with the deleted claims 155-183 of the parent application). With regard to the divisional application, the Respondent issued a FER on 11th September 2017 where it was indicated that the divisional application did not introduce a unique invention, and consequently, the application failed to meet the criteria for a divisional application as stipulated under Section 16 of the Indian Patents Act, 1970. On 09th February 2018, a reply to the FER was filed by the Appellant to address the concerns raised in the FER. Subsequently, a hearing was scheduled on 17th September 2019 to address the objections, specifically under Sections 3(k) and 16 of the Act. Even during the hearing proceedings to address the objections related to Sections 16 and 3(k), the Controller remained unpersuaded. Consequently, the impugned order was issued from the Assistant Controller of Patents and Designs under Section 15 of the Act, leading to the refusal of the Appellant’s divisional application. In the impugned order, the Controller related to Section 16 of the Act stated that:
“5. It is evident that the applicant had filed 1-183 claims in the First application (Parent application). There was multiple independent set of claims related to only ‘A Method and A Computer readable medium storing computer-executable instructions’. There was not even a single claim of ‘A computing Device or A System for implementing the method claimed.
6. The applicant filed the current application with 1-29 claims by dividing the parent application of his own free will under section 16(1) of The Patent Act. No objection to the distinct invention was communicated in FER of the parent application from the office (Indian Patent Office).
7. The agent of the applicant has contested, in his submission dated 03/10/2019, that the claims of the present application were dropped from the claim set originally filed for the parent application 487/DELNP/2006. It is pertinent to note that the parent application originally had 183 claims. Of the 183 claims, claims 155-183 were been deleted from the parent application at the time of responding to FER dated February 25, 2010. with the response being filed on December 07, 2010. Claims 155-183 of the parent application formed the basis of the current divisional application’. Therefore, the applicant filed claims 1-29 in this current application (divisional application, but it is clear that these claims are not related to distinct inventions.
8. Further, the applicant has amended the ‘method’ claims 1-29 to ‘system claims’ 1-29. These amendments cannot be considered under section 16 as evidenced above.
9. In view of the above reasoning, I am of the opinion that the claimed matter in claims 1-29 is not a distinct invention under section 16 of The Patent Act.“
Submission of the Counsel
Given the impugned order, the Appellant’s counsel while acknowledging the precedent set by the Delhi High Court in Boehringer Ingelheim International GMBH v. The Controller of Patents and Anr2 submitted that the “Appellant’s application is likely to succeed. This is because the subject of the divisional application has neither been encapsulated within the claims nor detailed in the specification of the parent application. Given the distinct nature of the divisional application’s claims…the Appellant rightfully qualifies for the provisions under Section 16 of the Patents Act.” On the other hand, the Respondent’s counsel defending the impugned order argued by submitting a comparative tabulation provided by the Indian Patent Office. The Respondent’s counsel anchored her argument in the Boehringer Case stressing the necessity for a “plurality of inventions” within the parent application’s claims. Further, the Respondent’s counsel argued that “while the parent application encompasses multiple independent sets of claims, all centre around a method and a computer-readable medium containing executable instructions. Crucially, these independent sets converge towards a group of inventions, which collectively represent a ‘single inventive concept’ as stipulated under Section 10(5) of the Patents Act.” She contended that the submitted point fundamentally invalidates the eligibility of the divisional application. The Respondent’s counsel further submitted that since no system or device claims were initially pursued within the parent application’s 183 claims, the claims of the divisional application should be deemed abandoned.
Analysis And Findings
The impugned order cited the following two grounds of rejection:
- Claims made in the divisional application are not distinct from the claims of the parent application. Thus, the subject invention is not allowable under Section 16 of the Patents Act.
- The subject invention is not patentable under Section 3(k) of the Patents Act, being a computer program per se.
The High Court observed that the Respondent rejected the subject invention under Section 16 of the Act without supplying any substantial or coherent justification. The Court’s central inquiry revolved around determining if the core of the subject invention, as presented in the divisional application, contravenes Section 16 of the Act. The Court on the distinctness of claims was of the view that “The Controller contends that claims 1 through 29 of this divisional application do not present a unique invention, suggesting that they merely mirror the parent application. To make such a determination, a detailed comparison of the claims from both applications is indispensable. The impugned order, however, seems to harbour an inconsistency.” The Court was furthermore of the view that, however, the exact labelling of the claims be it as method or system was of secondary importance to the court.
To facilitate the process of examination, the Court further encapsulated a side-by-side comparison of the independent claim 1 from both applications in the form of a table and the order stated the following:-
“18. Claims are pivotal in defining the extent of protection that an invention receives. Even if the foundational teachings or descriptions appear similar, as illustrated in the afore-noted table, it is the specific framing and content of the claims that truly differentiate one invention from another. The transformation of claim 155 from the parent application into the independent claim 1 of the divisional application underscores this distinction. Consequently, the Controller’s stance that the divisional application’s claims are merely reiterations of the parent application lacks merit. Furthermore, the Respondent’s reliance on the Boehringer (Supra) judgment is misguided…. Given these considerations, deducing that the claims in the divisional application were previously disclosed in the parent application’s claims is an erroneous conclusion.“
“19. The Controller has also failed to appreciate that Section 16 of the Patents Act permits voluntary filing of divisional applications. The language of the statute makes it clear that a divisional application can be filed if the claims of the parent application relate to more than one invention. This has also been observed in the case of Boehringer (Supra), wherein the concept of ‘plurality of claims’ has been discussed…. From the comparison, it is evident that while the subject matter of both applications revolves around video decoding, the modus operandi delineated in each is different. One is method-centric, emphasizing ‘how’ it is done; the other is system-centric, illuminating ‘what’ it does.
“20. Furthermore, the Court finds that the Controller has erroneously objected to the amendment of method claims 1-29 to systems claims 1-29 under section 16 of the Act. It is crucial to note that we are currently in the pre-grant stage, which is primarily governed by section 59(1) of the Patents Act. Given that the transition from method claims to system claims is encompassed within the complete specifications, such amendments are permissible, as held in Allergan INC v. The Controller of Patents3.“
The Court further held that from the foregoing analysis, it is evident that the Controller’s conclusions are erroneous. Therefore, the Court concluded that:
“21. A divisional application by its very nature requires a delineation from its parent application. The table presented earlier, demonstrates a marked transition from method-oriented claims in the parent application to system-centric claims in the divisional one. While the divisional application’s claims draw inspiration from the parent application, they undeniably embody different sets of claims. The objections under Section 16 of the Patents Act, are therefore not sustainable.“
Concerning the objection regarding Section 3(k) of the Act, the Court held that “Moreover, the claimed matter is a computer program per se stored in a computer-readable medium. Hence, the amended claims 1-29 are proscribed under section 3(k) of The Patent Act.” Further regarding objection 3(k), the Court was of the view that the Respondent’s counsel was devoid of any reasoning and was unable to substantiate the ground during the hearing for disallowing the application under Section 3(k) of the Act, therefore, the Court remanded the matter on that aspect.
Directions of the Court
- The impugned order dated 28th November 2019 was set aside.
- Since there was no discussion on the requirements under Section 3(k) of the Act, therefore the matter was remanded to Respondent for re-examination of the divisional application on the objections on non-patentability under Section 3(k).
- The divisional application for the subject invention was restored to its original number.
- Before deciding the matter afresh, the Appellant shall be granted a hearing and the notice of such hearing must delineate the objection(s), if any.
- The matter was to be decided within four months from the date of release of the judgement, on the issue of Section 3(k) of the Patents Act. The Appellant’s divisional application shall be decided in light of the law discussed in the judgments of this Court in Ferid Allani v. Union of Indiaand Ors.4 and Microsoft Corporation v. The Assistant Controller of Patents and Designs5.
Considering the various landmark judicial precedents, such as the Boehringer case etc., it can be adjudged that a voluntary division of the parent application can be pursued by the Applicant under Section 16 of the Indian Patents Act, 1970 if the parent claims are subjected to a restriction or there is an objection of lack of unity of invention. That is, when there are multiple inventions disclosed in the parent application, and the claims of the parent application and the divisional application are distinct that’s an ideal proposition to file a divisional application in India. However, if the parent claims are not objected to lack of unity of invention, a voluntary divisional application can still be filed provided that the divided claims are deleted from the parent application and the burden of proof is on the Applicant. That is if the IPO objects, then the Applicant can prove that the divided claims relate to a distinct invention in comparison to the parent claims in such cases. Furthermore, regarding voluntary amendment of claims under Section 59 of the Indian Patents Act, 1970 from method/process claims to system/product claims or vice-versa in view of the various judicial precedents such as the Allergan INC case etc., it is to be noted that, if the claim amendments are carried out by the Applicant in the pre-grant then it shall be valid under Section 59 of the Act. Further, if the claim amendments fall within the scope of patent specification and originally filed claims at the pre-grant stage then the amendments should not be explicitly rejected without examining the other aspects of patentability in the divisional application.
1. C.A.(COMM.IPD-PAT) 358/2022
2. C.A.(COMM.IPD-PAT) 295/2022
3. 2023 SCC Online Del 295
4. W.P.(C) 7/2014 dated 12th December, 2019.
5. DHC Neutral Citation: 2023:DHC:4322