The Intellectual Property Appellate Board (‘IPAB’) has allowed the appeal filed againt rejection of the patent application in a case involving divisional application with different combination of components[1]. The Appellant’s patent application was earlier refused by the Controller under Section 15 of the Patents Act, 1970 (‘Act’).

Facts and issues

In the instant case, the Appellant had filed a patent vide Patent Application No. 2745/KOLNP/2009 on July 28, 2009, for an invention titled, ‘AN AGRICULTURAL CHEMICAL CONTAINING RESIN COMPOSITION.’ This was a divisional application filed as per Section 16 of the Act; the parent application viz., 340/KOLNP/2007, was granted a patent.

The Respondent issued a first examination report (‘FER’) on April 18, 2013, wherein it objected to the Appellant’s patent application stating that there was no distinction between the claimed subject matter of the parent and divisional applications as they were both covered under a single invention/concept and thus, did not possess the merit for a divisional application. The FER further objected that the claims 1-39 in the application lacked novelty and inventive step in the light of the cited prior art documents, were not supported by the description of the as-filed specification, fell within the scope of Section 3(e) of the Act, and claim 1 did not sufficiently define the invention.

The Appellant filed a response to the FER on July 15, 2013, along with an amended set of claims 1-17. Thereafter, the Respondent issued a second examination report (SER) on December 26, 2013, wherein it stated that Form-13 which was filed for voluntary amendment of claims could not be allowed under Section 59(1) of the Act. The SER further objected that the amended claims could not be allowed as they had not been claimed in the parent application and fell within the scope of the granted claims of the parent application as imidacloprid had already been claimed in the parent application.

Further, the SER stated that since the feature ‘neonicotinoid based compound’ had not been claimed earlier and/or explicitly disclosed either in the parent application’s complete specification or at the time of filing the divisional application, voluntary amendment of the claims to add the said feature could not be allowed. The objections raised under the FER, namely, claims 1-39 were not novel and lacked inventive step, fell within the scope of Section 3(e) of the Act, were not supported by the description, and that claim 1 did not sufficiently define the invention were maintained in the SER.

The Appellant submitted its response to the SER on March 17, 2014, a formal hearing took place on February 24, 2015, and the Appellant filed its written submissions on February 26, 2015. Subsequently, on March 18, 2015, the Respondent refused the Appellant’s patent application via the impugned order.

Decision and analysis

The primary issues, in this case, were whether the patent application merited its divisional status and whether it was novel, inventive and patentable.

The Appellant submitted that the granted claims of the parent application recited “An agricultural chemical-containing resin composition comprising: (i) an agricultural chemical active ingredient from a group consisting of acetamiprid, imidacloprid and monuron (neonicotinoid compounds), (ii) a styrene which could either be a maleic anhydride copolymer alone or admixed with a resin, and (iii) a release controller made of silicon oxide.”

On the other hand, claim 1 of the divisional application recited “An agricultural chemical- containing resin composition comprising: (i) an agricultural chemical active ingredient from a group consisting of a fungicide, insecticide, acaricide, plant growth regulator, herbicide, synergist, antidote, antibacterial agent, and an anti-algae agent (neonicotinoid compounds other than imidacloprid), (ii) a styrene which could either be a maleic anhydride copolymer alone or admixed with a resin, and (iii) a release controller selected from the group consisting of water soluble polymers and surfactants.”

In both the parent and divisional applications, components (i) and (ii) were the same but the release controller was different. The Appellant highlighted that the two applications claimed different combinations of components, and thus, its patent application should merit divisional status.

As per Section 16 of the Act, a divisional application can be filed, when the parent application is pending, either suo motu or if the applicant seeks to rectify an objection on account of non-unity of invention. The invention claimed in the divisional application must be distinct from the invention claimed in the parent application, the claims must be within the scope of the invention disclosed in the parent application, and the divisional application cannot include any claim or subject matter not disclosed in the parent application.

In OA/18/2009/PT/DEL,[2] the IPAB had held that the sine qua non for seeking a divisional application was the existence of a plurality of invention. The IPAB explained that the rationale behind a divisional application was to protect multiple inventions disclosed in a patent application if the claims did not relate to a single invention, and the Act allows the appellant to file a divisional Application either on his own or at the insistence of the Controller. Additionally, the IPAB stated that a divisional application could be filed for a different combination of components i.e., composition 1 = A+B (parent application), composition 2 = A+C (divisional application).

Accordingly, it was explained that in the instant case, the parent application claimed for composition 1: A + B + C whereas, the divisional application claimed for composition 2: A + B + D, wherein components “C” (silicon oxide) and “D” (selected from the group consisting of water soluble polymers and  surfactants) were different release controllers for the parent and divisional applications, respectively.

The Appellant clarified that the components in the composition claimed formed a compatible state, unlike the cited prior art documents. The prior art document, WO02/21913 (‘D2’), did not disclose the limitation of the agricultural chemical active ingredient being a neonicotinoid based compound, and the remaining cited prior art documents did not suggest the compatible state or matrix as present in the claims of the instant application. The cited documents did not singularly or collectively disclose the features and limitations of the claims.

Furthermore, the effect of the claimed agricultural chemical was the inhibition of the phenomenon by which a large amount of agricultural chemical active ingredient would be released in a short period of time immediately after the agricultural chemical treatment i.e., the initial burst, and of the phenomenon by which the entire amount of the agricultural active chemical ingredient remained without being released, i.e., dead stock. The invention claimed in the Appellant’s patent application could prevent the problem of an increased amount of agricultural chemical active ingredient remaining in the crop and the environment, and resolve the problem of chemical damage.

The IPAB considered all the facts and submissions, and found the claimed composition to be a novel invention with an unexpected technical effect of inhibiting the release of a large amount of the agricultural chemical active ingredient in a short period of time immediately after the agricultural chemical treatment, and was therefore patentable.

It found the claims to have described the invention clearly, completely, and was adequately supported by the description. The amended claims also fell within the scope of the claims originally filed in the instant divisional application and hence, satisfied Section 59(1) of the Act. The IPAB reproved the Respondent’s decision and concluded that the Respondent failed to understand the concept of a divisional application, while also noting that it remained silent on the grounds of novelty, inventive step, and patentability. Accordingly, the IPAB allowed the appeal, set aside the impugned order, and directed the Respondent to grant the Appellant’s patent.

[1] Nippon Soda Co. Ltd., v. The Controller General of Patents, Designs, and Trademarks & Anr [OA/25/2015/PT/KOL, decided on 25 August 2020]

[2] Order No. 243/2012, on Oct. 29, 2012.