Patents – Divisional application when cannot be rejected

In Bayer Aktiengesellschaft v. The Controller of Patents & Designs,[1] the Intellectual Property Appellate Board (‘IPAB’) enumerated Section 16 of the Patents Act, 1970 (‘Act’), whereby a patent applicant can make a further application, before the grant of the patent, on grounds that the claims of the complete specification relate to more than one invention.

Parent and subject applications

Bayer Aktiengesellschaft (‘Appellant’) filed a patent application vide Patent Application No. 591/MUM/2001 for its invention titled ‘COMPOUNDS OF THE FORMULAE (III), (III-a) AND (III- b) AND PREPARATION PROCESS THEREOF’ on June 26, 2001 (‘parent application’). The Controller of Patents & Designs (‘Respondent’) issued a first examination report (‘FER’) on March 13, 2007, wherein it objected to claims 4-6 and 7-10 as being independent claims that should be made dependent on claim 1.

Owing to the technical impracticability of making the highlighted claims dependent on claim 1 of the parent application, the Appellant deleted claims 1-3 and chose to pursue only claims 4-6 of the parent application along with their process of preparation. On September 29, 2008, the parent application was granted a patent and allocated patent number 224084.

In the meantime, the Appellant filed a divisional application to pursue the compounds of formula (I) based on the distinct and independent claim 10 of the parent application vide Patent Application No. 507/MUM/2008 for its invention titled, ‘COMPOUNDS OF THE GENERAL FORMULA (I)’ on March 12, 2008 (‘subject application’). The Respondent issued the FER for the subject application on January 4, 2012, the response to which was filed by the Appellant in a timely manner; the Respondent thereafter issued a second examination report on October 22, 2012, to which the Appellant filed its reply on January 2, 2013.

The official hearing as per Section 14 of the Act took place on March 15, 2013, and the Appellant filed its written submission on April 3, 2013. On August 12, 2014, the Respondent passed an order (‘impugned order’) whereby it refused the subject application on grounds that the claims violated Section 3(d) of the Act and because it did not constitute a valid division as per Section 16 of the Act. The Appellant thereafter preferred this current appeal to the IPAB, contesting the said order.

Divisional application under Section 16

It is a settled position that when an independent sub-claim cannot be made dependent on the main claim, the subject matter of the sub-claim is distinct and separate from the subject matter of the main claim. In the instant case, the Appellant submitted that since the technical scope of claims 4-6 and 7-10 of the parent application could not be altered to be made dependent on the main claim, it filed a divisional application i.e., the subject application.

The Appellant submitted that the Respondent’s decision was in contravention of the doctrine of lex non cogit ad impossibilia viz., the law does not require a person to perform an impossible act. In this case, it was impossible for the Appellant to record the claims to be dependent as it was technically unfeasible. The compounds of formula (I) in the subject application could not be considered as intermediates of the compounds of formula (III) in the parent application.

The compounds of formula (I), (I-a), and (I-b) as claimed in the subject application were structurally distinct from the compounds of formula (III), (III-a), and (III-b) granted in the parent application. The Appellant submitted that the compounds of formula (I) claimed in the subject application could be prepared from the compounds of formula (III) as claimed in the parent application by hydrolysis of the compounds of formula (III) and thereafter esterifying the same, but not vice versa. It was alleged by the Appellant that the Respondent’s finding that the compounds of formula (III) were linked with the compounds of formula (I) under a single inventive concept was erroneous.

More pertinently, the subject application complied with all the requirements of Section 16 of the Act –

Compliance with Section 16(1): The subject application was filed on March 12, 2008, which was before the grant of the parent application on September 29, 2008. The Appellant filed the subject application suo motu and it consisted of an invention that was distinct from the invention claimed in the parent application.

Compliance with Section 16(2): The claims of the subject application were within the scope of the invention disclosed in the parent application and did not include any subject matter that was not disclosed in the parent application.

Compliance with Section 16(3): The subject application did not include any claim that was claimed in the parent application viz., there was no overlap of claims.

Section 3(d)

Since the compounds of formula (III) of the parent application were considered to be novel, the compounds of formula (I) could not be considered as a derivative or a new form of a known compound. The compounds claimed in the subject application were the novel intermediates to prepare plant protection products and the main structural element of the claimed compounds also depicted higher activity, and hence did not fall within the ambit of Section 3(d) of the Act.

The Respondent failed to address the Appellant’s written submissions and it incorrectly presumed that the compounds of formula (I) claimed in the subject application were the intermediate compounds to prepare the compounds of formula (III) claimed in the parent application. Additionally, once the Respondent acknowledged the novelty and inventive step of the claims of the subject application, Section 3(d) was no longer applicable.

Principles of natural justice

The Respondent introduced a fresh objection during the hearing by questioning the validity of the subject application, notwithstanding the fact that the objection had not been listed in the hearing notice. The IPAB found this to be a grave procedural error on the Respondent’s part, and a violation of the principles of natural justice,[2] as it had introduced an objection during the hearing without prior notice, which was in contravention to the directions laid down by the IPAB in Resprotect GmBH v. The Controller of Patents & Designs & Anr.[3]

The IPAB noted that the Appellant had not derived any unfair advantage by filing the divisional application, but rather had the disadvantage of having had to pursue the scope of the compounds of formula (I), (I-a), and (-Ib) in the subject application as against pursuing the same in the parent application. It lost over six (6) years in prosecution besides having incurred additional statutory and attorney fees.

The circumstances that necessitated the filing of the subject application should have been taken into account by the Respondent, instead of having refused the application based on its premeditated intentions. Taking all the facts and the law into consideration, the IPAB found the impugned order to be erroneous and an unnecessary penalisation on the Appellant and accordingly set aside the order. It directed the Respondent to grant the patent on the subject application.

 

[1] OA/6/2015/PT/MUM, decided on Aug. 25, 2020.

[2] Otsuka Pharmaceutical Co. Ltd. v. The Controller General of Patents & Designs & Anr., OA/24/2010/PT/DEL; If the objections relied upon by the Controller are not communicated in the hearing notice, it is a violation of the principles of natural justice.

[3] OA/23/2010/PT/DEL.