In a crisp judgment dated May 7, 2015, the Chief Justice of the Delhi High Court dismissed a writ petition filed by a Delhi-based HIV/AIDS NGO, The Delhi Network of Positive People, in which directions were sought to amend the procedure under Patents Act, 1970 to prevent abuse of the process of filing divisional patent applications by patent applicants.
As our readers are aware, Section 16 of the Patents Act, 1970 permits filing a divisional patent application either suo motu by the applicant or in response to an objection raised or direction issued by the Patent Office, only when the basic patent application discloses multiple inventive concepts which are not cognate. The Petition (rightly) raises the issue of abuse of the process of suo motu filing of divisional patent applications by applicants who anticipate rejection of their patent applications, in the hope that they might get lucky the second time around, even when they are fully aware that they do not satisfy the requirement of Section 16 (this issue was dealt with in a post I wrote four years ago elsewhere).
To remedy the mischief, the Petitioner prayed for directions to the Ministry of Commerce requiring it to amend Form 1 of the Patents Act so as to include an undertaking by the patent applicant at the time of filing of a divisional application that the parent application discloses multiple inventions not constituting one single inventive concept and that the claims of the divisional application are not identical to those of the parent application. A second direction was sought which required the Controller of patents to take an ex parte decision on the maintainability of a divisional application before examining it for patentability. Finally, a provision for action against mischievous patent applicants was sought.
Although the Court recognized the validity of the concerns raised in the petition, it was dismissed on grounds that a Court could neither legislate nor issue a direction to the Legislature to enact in a particular manner. Further, in the absence of a constitutional challenge to the legislation, it would be equally impermissible for a Court to expand the scope of the legislation or recast it through interpretation. In this regard, reliance was placed on the Supreme Court’s decision in V.K. Naswa v. Home Secretary, Union of India (2012) 2 SCC 542. The High Court also observed that it could not direct the Controller of Patents to exercise his power in a manner contrary to the framework of the Act.
The other reason for dismissal of the petition was the Court’s view that it could not adjudicate on the issue in vacuum without their being a specific cause of action or without the impleadment of an errant patent applicant as a respondent to the petition. I am not sure the absence of these two ingredients is fatal to a writ petition which challenges the Patent Office's handling of divisional applications as opposed to targeting any patent applicant in particular. The Petitioner may seek consolation from the Court’s direction to the Ministry of Commerce and the Controller of Patents to treat the petition as a representation and consider taking appropriate measures to address the issue.
I agree with the Court on the impropriety of directing the Executive or the Legislature to amend a statute or to interpret it in a manner not envisaged by it. That said, I think that the current declarations sought from an applicant in Form 1 already have the effect of declaring that a divisional application is not identical in its claims or scope to the parent application. In Para 9 of Form 1, which is titled “Declarations”, a patent applicant is required to declare that there is no lawful ground of objection to the grant of the patent. Further, when a divisional application is filed, the applicant has to furnish the details of the parent application and declare that the divisional has been filed pursuant to Section 16 of the Act.
It could be argued that if an applicant knowingly files a divisional patent application which is identical to the parent, he is in violation of his own declarations in Para 9 for having knowingly filed an application which does not satisfy the ingredients of Section 16. If a patent is ultimately granted pursuant to the divisional, it may be revoked under Section 64 on the same substantive grounds on which the parent was rejected, apart from the ground of having obtained the patent on a false suggestion or misrepresentation under Section 64(1)(j) of the Act. Upon revocation, the IPAB or a Court in a counterclaim, as the case may be, could impose exemplary costs for having committed fraud on the Patent Office. That said, the issue remains that there is no mechanism as on date to address the issue right at the stage of examination of the divisional application. One possible solution may be for the Controller General of Patents to issue a practice direction requiring:
A. patent applicants to submit a copy of the parent application when a divisional is filed;
B. patent examiners to scrutinize the issue of maintainability of a divisional before examining it for patentability
Comments and corrections are welcome.