SYGENTA PARTICIPATIONS AG OF SCHWARZWALDALLEE Vs. UNION OF INDIA THROUGH THE SECRETARY DEPARTMENT OF INDUSTRY & OTHERS

JUDGEMENT

(1.) THE appellants' divisional application was dismissed on the ground that it has not been filed in accordance with the provisions of the Patents Act, 1970. This appeal is against that order.

(2.) THE invention related to Microbicide', a fungicidal two component composition based on metalaxyl and a method of controlling and preventing fungal infestation plants. Claim 1 related to the composition claim 2 to 5 were dependent. Claim 6 was for the method and the other dependent claim 1 to 5 and 13 were objected and not allowable. The divisional application was called a fungicidal composition and specifications are the same as in parent application. Here Claim 1 is a combination of (original) claims 1 and 2. Claim 2 to 5 are really the original claims 3, 4, 5 and 13.

(3.) WE have already decided in two earlier cases that there cannot be any divisional application unless there is a plurality of inventions. Yet the learned Senior counsel Shri Sanjay Jain appearing for the appellant requested us to hear him since there may be certain legal issues that have not been covered in the earlier cases and also since this issue will have a very wide impact on many similar applications. In OA/18/2009/PT/DEL - Order No. 243 of 2012 - - Bayer Animal Health GMBH, Germany Vs. Union of India, the Intellectual Property Appellate Board (IPAB) had held that unless there is a plurality of inventions, there can be no divisional application. We held that S. 16 entitles the applicant to file such an application if he desires to remedy the objection that the claims relate to more than one invention or to file a further application in respect of an invention disclosed in the application already filed. The Act does not empower or give any patent applicant the right to resubmit the same application as a divisional application. We had earlier held in an another case OA/6/2010/PT/KOL - Order No. 111 of 2011 - - LG ELECTRONICS, INC, Republic of Korea Vs. The Controller of Patents and Designs, Kolkata and others this same issue was raised and it was contended that the clause "if he so desires" gave the person who has made a patent application the unconditional freedom to file a divisional application even when there is no plurality of invention. In the above case we held that "We agree with the applicants arguments that the applicant can file an application as divisional application of his own before the grant of patent. However Respondent -2 is mandated by the law to ascertain that the divisional application so filed is on account of disclosure of plurality of distinct invention in the parent application. Section 16 pertains to power of the Respondent to make order respecting division of application. Right to file divisional application indeed rest with the applicant but the power to ascertain its allowability is vested with the Respondent. The first essential requirement of this provision is the fact of existence of plurality of invention in the parent application. The provision under section 16 put a bar on filing same claims as it mandates the Respondent to seek such amendment of the complete specification as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other. In the present case same application with same claims have been filled which is not the purpose of this provision. Since the appellant admittedly stated that the mother application has been allowed to be treated as abandoned under section 21(1), we feel that further application for same invention with same claims is an attempt not to divide the subject matter of the application but an exercise to revive the subject matter of the application by enlarging the time for securing the grant of patent using the provisions of section 16. This in fact is not the purpose of section 16. This section does not include such ground for division of application. Thus if the applicant desires to file a divisional application for his invention, disclosure of more than one invention (plurality of distinct invention) in the parent application is essential. In fact the existence of plurality of invention in the parent application is the sine qua non for a divisional application by the applicant whether it is suo moto as to remedy Controller's objection." We also held that "If the argument of the appellant that the he may file a divisional at his unconditional "desire" then a situation may arise (as in the present case) when the FER is sent to the applicant by Respondent -2, the applicant instead of returning the documents within 12 months from FER under Section 21 may choose to file a divisional application and then abandon the parent application even with no plurality of distinct inventions. This would mean that the Respondent -2 has to further re -examine such cases and send the FER. The net result of this action of the appellant will enlarge the time limit beyond the statutory period of one year given to him under section 21(1). This would result in uncertainty in respect of the grant or refusal of such applications which will be not in the interest of public at large as they will not be able to find when the patent will be granted, refused or abandoned. They will be in dark as to when the invention would fall in public domain. This in fact is not the desired purpose of Section 16. hence his argument is not acceptable."