PRABHA SRIDEVAN - (1.) 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. This appeal has been filed against the order passed in the matter of a divisional application No. 1427/DEL/1999 (Patent Application No. 371/DEL/1997). The invention related to "Optionally Substituted 8 -Cyano -1 -Cyclopropyl -7 -[2,8 -Diazabicyclo] [4.3.O] Nonan -8 -Y1] -6 - Fluoro -1,4 Dihydro -4 -Oxo -3 - Quinolinecarboxylic Acids And Their Derivatives". The Patent application claims "Optionally Substituted 8 -Cyano -1 -Cyclopropyl -7 -[2,8 -Diazabicyclo] [4.3.O] Nonan -8 -Y1] -6 - Fluoro -1,4 Dihydro -4 -Oxo -3 - Quinolinecarboxylic Acids And Their Derivatives". The patent application was examined and the First Examination Report was made on 2nd July, 1999. The First Examination Report objected that the invention was not patentable under S. 5(1)(b) of the then existing Patents Act, 1970 and it was a pharmaceutical product with a chemical product base. The Patent Agent for the appellant herein did not respond to the objections and the application was deemed to have been abandoned under S. 21(1) of the Act for not complying with the said requirement. It was also noted that it was not filed as a WTO application under S. 5 of the then Patents Act.
(2.) AFTER the new Act came into force and chemical substances became patentable, the appellants filed a fresh application for the same invention as a divisional application of the earlier main application. This was again examined and the First Examination Report was issued on 20th September, 2007 including the objection that the present application was not a valid application under S. 16 and it did not comply with the requirements of S. 16. The appellant replied to the objections stating that the Examiner had not given a correct interpretation to the provisions of S. 16. The appellant's agents also did not inform the Patent Office that the earlier application was deemed to have been abandoned under S. 21(1) of the Act. The application was again examined and a further report containing the objections was issued by the Patent Office vide letter dated 08/10/2008. The appellant was informed that the present application cannot be considered as a divisional application and S. 16 requires the parent application to contain more than one invention for filing a divisional application. To this again, the appellant reiterated that their divisional application has been validly filed. It was again examined and it was again found that the divisional application did not pass the test of S. 16. The appellants requested for a hearing and a hearing was held where the same grounds were raised. According to the appellants, they were entitled to file a divisional application even if the parent application did not contain more than one invention. The Deputy Controller of parents and Designs dismissed the application. In the impugned order he observed that the concept of divisional application is basically to protect multiple inventions disclosed in one patent and if in one parent application, the claims did not relate to a single invention, the Law provides the appellant to file a further application as a divisional application on his own or at the instance of the Controller. He also found that the claims in the parent application and the instant divisional application were exactly the same. They did not disclose more than one invention. He also noted that this application has been filed as a divisional application to protect the same invention as the parent application. Though this was not patentable under the Law prior to 2005, it would have been protected if due care has been taken. He also observed that the appellant cannot revive the parent application, which was not patentable at that time of filing of their application. The learned counsel for the appellant reiterated that it was only because the invention was not patentable under the earlier Law that the original application could not be proceeded with and therefore the present application should not be rejected.
(3.) THE paper book contains both the parent application as well as the present application. The complete specification is identical as per the claims. While there are 11 claims in the parent application, the present alleged divisional application contains 6 claims. Claim 1 is identical in both except for the words "Optionally Substituted" in the beginning of the parent application. Claim 2 of the parent application is the process for preparation of the product described in claim 1. This is omitted in the present application. Claim 3 of the parent application and claim 2 of the divisional application are identical. Claim 4 of the parent application and claim 3 of the divisional application are identical. Claim 5 of the parent application is identical with claim 4 of the divisional application except for the words "the compound as claimed in claim 1" which precedes claim 5 of the parent application. Claim 6 of the parent application refers to medicaments comprising compounds of the formula (I) according to claim 1. Claim 7 is use of compounds of the formula (I) according to claim 1 for the preparation of medicaments. Claim 6 and 7 are not found in the present application. Claim 8 of the parent application is the use of compounds of the formula (I) according to claim 1 in antibacterial compositions. Claim 8 is the same as claim 5 of the divisional application minus the words "Use of". Claim 9 of the parent application is the same as claim 1 except the words "substantially as herein described with reference to the foregoing examples". This is missing in divisional application. Claim 9 of the parent application is identical as in claim 6 of the divisional application. Claim 10 is process and preparation of the product described in claim 9. This is missing in the claim. Claim 11 refers to medicaments. The learned counsel for the appellant explained in detail the history and background of the present Act and how India was requested by the Dispute Submission Body to bring its transitional regime for patent protection for pharmaceutical, agricultural and chemical products in conformity with TRIPS Agreement. The First Examination Report relating to the parent application was issued on 2nd July, 1999. It referred to claim 6 and claim 11 as it relates to invention distinguished from the rest and it also objected that claims 1 to 6, 9 and 11 are not allowable under S.;