- Case number
- C.A.(COMM.IPD-PAT) 358/2022
- Court
- Delhi High Court
- Date of judgment
- Judge
- Sanjeev Narula
- Outcome
- Remanded
Headnote
Refusal of a divisional application under sections 16(1), 16(3) and 3(k) set aside. On section 16 the Court held that claims define the extent of protection, so even where the foundational teachings appear similar it is the specific framing and content of the claims that differentiates one invention from another. The parent application was method-centric, explaining how the thing is done, while the divisional was system-centric, describing what the system does, so the divisional claims were not mere reiterations. Section 16 permits voluntary filing of a divisional where the claims of the parent relate to more than one invention, and Boehringer did not dispute that right but only clarified when such an application is valid. The Controller also wrongly objected to the conversion of method claims into system claims: at the pre-grant stage, governed by section 59(1), such a transition is permissible where it is encompassed within the complete specification. On section 3(k) the order said only that the claimed matter was a computer program per se stored in a computer readable medium, which is devoid of reasoning, the reasons for rejection having to be clearly discernible from the order.
Headnote by BRB Legal, written from the judgment: a summary for reference, not legal advice. Read the judgment itself before relying on it.