Calcutta High Court | Divisional Patent Applications Under Section 16 Patents Act Must Be Examined Independently | Deputy Controller’s Rejection Set Aside
Safiya Malik
The High Court of Calcutta Single Bench of Justice Krishna Rao set aside the order of the Deputy Controller of Patents and Designs rejecting a divisional patent application. The Court directed that the matter be remanded to a competent authority other than the officer who issued the impugned order. The Court held that the divisional application was maintainable under Section 16 of the Patents Act, 1970, and that the Deputy Controller had erred in relying upon the claims of the parent application to reject the divisional claim. The authority was ordered to re-examine the application, grant a fresh hearing, and pass a reasoned decision within six months.
The proceedings arose from an appeal filed under Section 117(A) of the Patents Act, 1970 against the order of the Deputy Controller of Patents and Designs dated 5 March 2024. The Deputy Controller had refused to grant a patent to Indian Patent Application No. 201838043708, which originated as a divisional application (3985/KOLNP/2012) filed on 20 November 2018.
The divisional application claimed a combination of two active ingredients: (a) Ibrutinib and (b) an anti-CD20 antibody such as rituximab or ofatumumab. The applicant submitted that this combination demonstrated unexpected results, thereby supporting inventiveness. The parent application had initially contained 133 claims directed to methods of treating hematological malignancies, later reduced to 33 product claims through voluntary amendment on 24 December 2012.
The Deputy Controller rejected the divisional application, reasoning that the claims represented a change in scope and were not permissible under Sections 57–59 of the Patents Act. It was further recorded that the voluntary amendment in the parent application was restricted in nature and that no justification for such amendment had been provided.
In the First Examination Report dated 18 December 2019, the office raised objections regarding lack of novelty in view of prior art (US2010041677). However, the Report did not question the maintainability of the divisional application. Rather, it noted that the claims of the divisional application were adequately supported by claim 33 of the parent application. Despite this, in the hearing notice and subsequent order, the Deputy Controller shifted the reasoning to maintainability, leading to rejection.
The appellant relied on the fact that Section 16 of the Patents Act permits a divisional application if multiple inventions are disclosed in the parent specification. According to the appellant, the divisional claims were fully supported by the original specification and did not overlap with those of the parent. Evidence filed with the response to the First Examination Report highlighted synergistic technical advantages: reduction of infusion-related reactions and enhanced efficacy when Ibrutinib was administered with an anti-CD20 antibody.
The matter therefore centered on whether a divisional application can be rejected solely on the basis that its claims do not correspond to those of the parent, notwithstanding disclosure in the specification.
Justice Krishna Rao recorded that Section 16(1) of the Patents Act allows an applicant, at any time before grant of the patent, to file a further application in respect of an invention disclosed in the specification of the first application. The Court noted: “Section 16 of the Act provides that a further divisional application shall be accompanied by 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.”
It was observed that the parent application had originally been for a compound, whereas the divisional application concerned a combination of two active ingredients. The Bench stated: “Therefore, the divisional application is filed during the pendency of the parent application, disclosed in the complete/provisional specification and relates to plurality of inventions.”
The Court cited precedents including Syngenta Limited v. Controller of Patents & Designs (2023 DHC 7473-DB), where the Delhi High Court held: “We hold that a Divisional Application moved in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed.”
Further reliance was placed on Gensquare LLC v. Assistant Controller of Patents and Design (Madras High Court, 13 March 2024) which reiterated that Section 16 does not require divisional claims to flow from the claims of the parent but only from its specification. Similarly, Victaulic Company v. Controller of Patents and Designs (Madras High Court, 26 July 2024) held that rejection contrary to the Delhi High Court’s ratio in Syngenta warranted interference.
Justice Rao observed: “Under Section 16(4) of the Patents Act, 1970, once having recognized the maintainability of the divisional application in the First Examination Report, under Section 16(3) explanation, the respondent should have proceeded as a substantive application wherein the outcome of the parent has no bearing on the examination of the divisional application.”
As to amendments, the Court noted: “No amendments were effected in the divisional application. An amendment of claim is permissible as long as it is supported by description.” Reference was also made to Allergan INC v. Controller of Patents (2023 DHC 000515), where the Delhi High Court stated: “The very use of the expression ‘scope of a claim’ in the concluding part of Section 59(1) would… require taking into consideration the complete specifications of the pre-amended claim, and not merely a textually cabined reading.”
“Considering the above, this Court finds that the order passed by the respondent dated 5th March, 2024 is not sustainable under law and the same is set aside and quashed.”
“The matter is remanded back to the respondent for consideration of the case of the applicant afresh after giving an opportunity of hearing to the applicant and to pass a reasoned and speaking order within a period of six (6) months from the date of receipt of this order.”
“The case of the applicant shall be heard and disposed of by the competent authority within the specified period as mentioned above other than the Deputy Controller of Patents and Designs who passed the impugned order dated 5th March, 2024.”
“I.P.D.P.T.A. No. 4 of 2024 is allowed.”
Advocates Representing the Parties
For the Petitioners: Ms. Archana Shankar, Advocate; Ms. Mini Agarwal, Advocate
For the Respondents: Mr. Swatarup Banerjee, Advocate; Ms. Sarda Sha, Advocate
Case Title: Pharmacyclics LLC v. Deputy Controller of Patents & Designs
Case Number: I.P.D.P.T.A. No. 4 of 2024
Bench: Justice Krishna Rao
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