Via SpicyIP: The Delhi High Court has its Hands Tied: Writ Concerning Divisional Patent Applications

This post was originally posted on SpicyIP.com, one of the leading blogs on intellectual property law in India. All rights with SpicyIP.com. Click here for the original post

By Ritvik Kulkarni

Recently, through a writ petition before the Delhi High court (W.P.(C) No.2867/2014), the Delhi Network of Positive People (DNPP) sought to tackle the issue of equitable and fair access to medicines. The petition attacked the abusive practice of divisional patent applications being filed before the Controller.

Though the petition was dismissed on procedural grounds, the Court asked the Ministry of Industry and Commerce to treat DNPP’s writ petition as a representation of its grievances and concerns, and directed the Ministry to look into it and to take action towards the same. The writ was dismissed as the remedies sought were outside the court’s jurisdiction. This is mainly because DNPP was inter alia asking the Ministry of Industry and Commerce (and other statutory bodies) to revise patent laws and to amend the patent rules. The Division Bench held that while exercising the power of judicial review, courts cannot legislate or even given directions to legislate.

SpicyIP had previously blogged about divisional patent applications here. As described in that post, the IPAB has earlier held, “The basis of a divisional application is the existence of a plurality of invention. This is a sine qua non for seeking a division of an application.”

The Patents Act, 1970 (the Act) provides under Section 16(1) that:

“A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.”

From a plain reading of the aforesaid provision, it is clear that a divisional application can be filed only in relation to the invention applied for in the first patent application (parent application). Furthermore, section 10(5) of the Act requires that a patent application containing a claim of complete specification must relate to only one single invention, and in the case of a group of inventions, to a single inventive concept.

In its writ[1] filed before the Delhi High Court, the DNPP alleged that several pharmaceutical companies abuse the law by filing multiple divisional applications which are  identical to the parent applications. This “creates uncertainty over the patent status of the medicines and that such uncertainty is against public interest”. As contented by DNPP, this practice also creates a threat of infringement for Indian generic pharmaceutical companies to come up with generic ARVs which has in turn led to a drop in access to ARVs for HIV+ patients.

It requested the Court to do the following:

  • Direct the Ministry of Industry and Commerce to prevent such abuse by inter alia amending Form-I of the Act and to require a declaration from the applicant (at the time of filing the divisional application) that “parent application discloses multiple inventions not constituting one single inventive concept and that the claims of the divisional applications are not identical to that of the parent applications”.
  • Direct the Controller of Patents to reject all divisional applications with claims identical to those of the parent application without affording the applicant an opportunity to be heard AND to identify such defaulters.

Though acknowledging the merit in the concerns raised by DNPP, the Division Bench of the Court on 7th May, 2015 held that it did not have the jurisdiction to issue such directions to such bodies to legislate or cause to legislate upon patent laws and rules. It did, however, direct the respondents to take the DNPP’s petition as a representation and to subsequently take a decision on whether the Patent Rules need to be amended any further.

Furthermore, a stark deficiency in the writ petition was that it did not challenge any particular divisional patent application, which could serve as an instance of the alleged abuse on part of pharmaceutical companies. Therefore, effectively the petitioner’s locus itself was diluted since it sought relief in vacuum.

It is indeed a sorry state of affairs that abusive divisional applications still continue to be filed even after the IPAB ruled against the same in Bayer Animal Health GmbH v Union of India & Controller General of Patents more than two years ago.

It is hoped that the Ministry will seriously take into consideration the grievances raised and solutions offered by the DNPP and will take steps to amend the Patent Rules accordingly.

[1] W.P.(C) No.2867/2014, Delhi Network of Positive People vs. Union of India and Ors.

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