Divisional application refused on the ground that it was filed after grant of the parent, set aside. It was admittedly filed on the same day as the grant. Since an applicant cannot know the exact time at which a patent is granted, refusing the divisional on that footing was total non-application of mind. The order also breached natural justice by refusing partly on the ground that the divisional claims were not distinctive, when the hearing notice had made no reference to distinctiveness and the applicant had no opportunity to answer it.
A divisional application was refused for splitting the parent, although the Division Bench judgment permitting it had been placed before the Controller, who disregarded it. The Act requires only that the divisional flow from the specification in the parent, not from the claims. On that limited ground alone the refusal could not stand.
A second divisional application of the same appellant, refused on the same reasoning, was remitted on the same limited ground: the Controller disregarded the Division Bench judgment in Syngenta Limited although it had been cited to him. Section 16 requires only that the divisional flow from the specification of the parent application, not that its claims flow from the claims of the parent.
A divisional application refused on the splitting of the parent was remitted because the Controller disregarded the Division Bench judgment in Syngenta Limited even after it had been brought to his notice. Following Syngenta and this Court's own judgment in GenSquare, section 16 requires only that the divisional flow from the specification of the parent application, and does not require the claims of the divisional to flow from the claims of the parent.
Divisional application refused on the ground that its claims did not flow from the claims of the parent, the Controller relying on the Single Judge decision in Boehringer Ingelheim. Set aside: that decision stands overruled by the Division Bench of the Delhi High Court in Syngenta Limited v. Controller of Patents and Designs. Section 16 requires only that the divisional application flow from the **specification** in the parent application, and does not require that the claims of the divisional flow from the claims of the parent. The foundational reason for the Controller's conclusion having gone, the conclusion could not stand. The other grounds of objection, on inventive step and on clarity, were left undecided by the impugned order.
Refusal of a divisional application under section 16 set aside as unreasoned. The order drew its conclusion by referring back to the hearing notice, which itself recorded only that the parent did not contain more than one invention and that the features of the divisional overlapped with those claimed in the parent, with no basis recorded for either conclusion. The applicant had relied on the written opinion of the International Searching Authority on the corresponding PCT application, which concluded that it contained four separate inventive concepts and did not meet the requirement of unity of invention, and the Controller failed to engage with that at all. The order also recorded that the applicant had not replied to a point in the hearing notice when the written submissions contained a detailed response to it.
Divisional application refused as not relating to a distinct invention compared with the allowed claims of the parent, and so illegitimate ab initio, with a further finding of lack of inventive step. Set aside because the section 16 objection appeared in neither the First Examination Report nor the hearing notice. To the Registry's answer that it is common practice to raise new objections during the hearing and then allow the applicant to respond, the Court held that such a procedure is not sustainable in law: objections must be restricted to those given to the applicant in writing, whether in the First Examination Report or the hearing notice, and if additional objections arise during the hearing the Patent Office must at the very least set them out in writing and give the applicant an opportunity to respond in writing.
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.
