1. The present appeal is filed under Section 117A of the Indian Patents Act, 1970, against the order dated 29/05/2014, passed by the Respondent,
being the Assistant Controller of Patents & Designs, under Section 15 of the Indian Patents Act, refusing to grant the Appellants’ Indian patent
application no. 5445/CHENP/2008.
2. It is the case of appellant that:
2.1 The impugned order dated 29 May 2014 refusing the grant of the patent application No.5445/CHENP/2008 based on the hearing held under
Section 15 of the Patents Act, 1970 is contrary to the law and without proper appreciation of the merits elaborated, which is ex-facie contrary to the
well-established principles governing unity standards stipulated by the provisions of Section 16 and hence is liable to be set aside.
2.2 The impugned order is erroneous as Respondent ought to have scrupulously assessed the distinctiveness of the presently amended claims vis-Ã -
vis the subject matter of claim 5 of the parent patent No. 234114 prior to arriving at the deduction that the claims as amended vide our written
submission dated 30 April 2014 do not constitute a distinct inventive concept over the granted claim 5 of the aforesaid parent patent. The Respondent
has erred in not looking into the merits of the response and written submission filed by the Appellant, wherein the amended claims indeed define a
distinct inventive feature over claims of the parent Patent No. 234114.
2.3 The impugned order is erroneous as Respondent has wrongly held that the specific amendment of a product claim directed to an inhibitor of human
extracellular Hsp90 being directed to a detectable label has a common inventive concept vis-Ã -vis a product-by-process claim whose scope and
protection is solely directed to an inhibitor of extracellular Hsp90 obtainable by a method for identifying and retrieving such an inhibitor.
2.4 The impugned order is flawed in that the order is based on an improper understanding of “single inventive concept†which is indeed lacking
between the claims of the parent patent No. 234114 and the finally amended claims of the present application No. 5445/CHENP/2008.
2.5 The Respondent has erred in having failed to consider, let alone appreciate significant delineating aspects of the claimed subject matter of the
pending claims amended vide our written submission dated 30 April 2014 vis-Ã -vis the method claims and the sole product-by-process claim of the
parent patent which was categorically highlighted to the Respondent during the hearing and also in the written submission filed by the Appellant. Even
assuming without admitting that the Respondent has presumably considered the differences which were categorically pointed out in the written
submission and yet having held that the present invention is not defining a “special technical feature†for complying with the prerequisites under
Section 16 has furnished an unpersuasive and flawed reasoning for construing the claims of the present application as an invalid divisional application.
2.6 The Respondent has erred in not applying the standards of PCT Rule 13.2 whilst evaluating the single inventive concept between the amended
claims and the claims of the parent Patent No. 234114. With respect to a group of inventions claimed in an international application, unity of invention
exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical
features. However, in respect to the present claims on record in respect of the current application 5445/CHENP/2008 do not share the corresponding
special technical feature.
Specifically, the special technical feature of the claims of 234114 resides in the process attributes owing to which the inventive merit was
acknowledged and the special technical feature of the present claims reside in the product attributes particularly distinguished by the title compound
being attached to a detectable label.
2.7 The Respondent has flawed in the evaluation of distinctiveness based on the functioning/working of the inhibitor which is not the standard for
ascertaining the special technical feature. The expression “special technical features†as defined in PCT Rule 13.2 as meaning those technical
features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. Hence, the evaluation of
distinctiveness based on the identified special technical feature ought to have been based on the contribution over prior art.
2.8 The Respondent states that “the impugned application is not truly a divisional application as per Section 16 of the Act†because the title
compound directed to an inhibitor of human extracellular Hsp90 has already been claimed in the parent Application. Patentee expressly rebuts this
untenable allegation as being in contravention to the well- established principles of law that govern the standards of unity universally. Appellant humbly
produces a decision ruled by the Boards of Appeal of the EPO in respect of the Case T 1391/07 to support their stance. In respect of this case, the
Board held that a double patenting objection did not arise when the claims of two applications only partially overlap. It is thereby stated that “It
follows from the above analysis that there is at least one technical feature in each of present claim 1 and claim 1 of the granted parent patent clearly
distinguishing the subject matter of the respective claim from that of the other one of the claims, and that these distinguishing features are such that
the scope of protection sought by the invention claimed in the application as presently amended is notionally different from the scope of protection
conferred by claim 1 of the granted parent patent. In view of this conclusion, the question of whether the remaining differences in the wording of the
two claims translate or not into further distinguishing features is not relevant for the purposes of the present decisionâ€
2.9 The Respondent has erred on relying on decision laid down by the Hon’ble Intellectual Property Appellate Board in respect of Indian Patent
Application Nos. 1191/KOL/2005 and 1427/DEL/1999 that have no bearing on the present matter at hand inasmuch as the finally amended claims
indeed define a special technical feature over the parent claims as mandated under Section 10(5) of the Indian Patents Act and PCT Rule 13.2.
3. Facts of the case:
3.1 The instant patent application no. 5445/CHENP/2008 dated 10/10/2008 was divided out of first mentioned patent application no.
2594/CHENP/2005 filed on 12/10/2005.
3.2 The first mentioned application no. 2594/CHENP/2005 was a national phase application of PCT international no. PCT/EP04/02422 filed with 23
claims and later retained 18 claims, deleing originally filed claims 18-20, 22 and 23 and retaining claims 1-18 listed as under:
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3.3 The mechanical deletion is visible from amended claim 18 which refers to claim 20 which is non- existent.
3.4 In reply to First Examination Report claims 1-16 were deleted by the applicants to meet the official requirements as is evident from the excerpts of
their reply dated 07/10/2008, quoted herein below:
3.5 This first mentioned application no. 2594/CHENP/2005 was granted with following 6 claims. Interestingly the deleted original claims 18-20 and 22
which do not have any reference in FER, were again reinstated in these granted claims.
3.6 Thus, we observe that in the six granted claims of the first mentioned application claims 1 and 2 relate to “ A method of detecting invasion
and/or metastatic behavior..â€, claims 3 and 4 relate to “A method of identifying a ligand….â€, claim 5 relates to ‘An inhibitor of extracellular
Hsp90…..†and claim 6 relate to “A pharmaceutical composition…â€
3.7 The instant divisional application was filed on 10/10/2008 with following 18 claims:
3.8 It is evident that the first mentioned application had just one claim i.e. claim 9 on ‘pharmaceutical composition’ whereas the divisional
application was filed with 7 claims on ‘pharmaceutical compositions’. The ‘use’ claims objected to by the examiner under section 2(1)(j),
were again filed as claims 8-11. The other deleted claims on ‘nucleic acid molecule’ and ‘kit’ were also re-filed after their deletion from
the first mentioned application. Further, the claims retained in first mentioned application were made part of this instant divisional application as well.
4. Let’s have a look on the operating portion of the order of the respondent:
“The applicant’s submission is misleading to the fact that the inhibitor claimed in the present divisional application is different from that already
claimed in the granted claim 5 of the parent application by mere attachment of a detectable label. It relevant to point out here that there is no change
in the ‘function/working of the inhibitor nor in its effect’ i.e., inhibitor binding specifically to human extracellular Hsp90 and capable of inhibiting
invasiveness, adhesiveness and/or metastatic potential of cancer cells.
In view of the arguments and submissions set forth by the applicant, the instant application cannot be considered as a divisional application to the
parent since there is found to be a single inventive concept between the two. In view of the above, the objection 1 is maintained.
The IPAB in its decision dated 11th August 2011 L.G.ELECTRONICS, INC v/s THE CONTROLLER GENERAL OF PATENTS AND
DESIGNS, TRADEMARKS AND GEOGRAPHICAL INDICATIONS & oths., ORIGINAL APPEAL NO.: OA/6/2010/PT/KOL/1639
(1191/KOL/2005)] held that “25.We are convinced that the phrase ""if he so desires"" used in Section 16 is not unconditional and it does not give the
applicant an unqualified liberty to file a divisional application, even when there is no situation of plurality of the distinct inventions contained in the
mother application†[Paragraph 25].
In another case of BAYER ANIMAL HEALTH GMBH v/s UNION OF INDIA THROUGH THE SECRETARY and oths., ORIGINAL
APPEAL NO.: OA/18/2009/PT/DEL (1427/DEL/1999), the Hon’ble IPAB while upholding the decision of Controller held that “The basis or
requirement of a divisional (further) application is the existence of a plurality of inventionâ€.
It is very clear from the above cases that, for filing a divisional application, there must be a plurality of distinct inventions or lack of unity of invention in
the parent application. In the instant case, it clearly appears that neither of the two is present and moreover there is no such thing appears and in fact
there was a unity of invention. Thus, it is not clear with what intention the Applicant has filed the instant divisional application.
The claims of the instant application are not allowable in a further (Divisional) application u/s 16 as the claimed ‘inhibitor of extracellular Hsp90’
is the single inventive concept and hence constitute unity of invention with the granted parent application claims as per the provisions of sec 10 (5) of
the Patents Act, 1970. Therefore, there is no merit in the application for consideration as a divisional (further) application under sec 16 of the Patents
Act, 1970. In view of the above, the objection 1 is maintained.â€
5. The leaned Controller has quoted two orders of this Board wherein the principles of divisional application were discussed. Further, this Board has
elaborately explained about various aspects of considering divisional applications in ESCO CORPORATION OA/66/2020/PT/DEL case. We incline
not to include for the sake of brevity.
6. We would like to emphasise that this Board in L.G.ELECTRONICS, INC OA/6/2010/PT/KOL held that “...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.
7. Hence, there is no objection on filing the divisional application from the applicant suo moto, if it involves plurality of inventions as enshrined in
section 10(5) of the Patents Act, 1970. But we find that there is no case of plurality of inventions in the instant application and hence we are inclined
to agree with the contention of the learned Controller.
8. Keeping in view the above facts and circumstances, the instant appeal is dismissed. No cost.
