- What is significance of enhanced efficacy in relation to devisional
Patent Application? Or
- Put in another way, can Test of enhanced therapeutic efficacy be applied
to evaluate patentability of Divisional Patent Application?
This issue has been addressed by Hon'ble High Court of Delhi in its Judgement
dated 23.08.2022 passed in Appeal bearing No. CA (Comm.IPD-PAT) 12 of 2022
titled as Novartis AG Vs Controller of Patents and Designs.
Let us first of all understand as to what is the devisional application? When
specification of Single Patent Application contains multiple inventions, then
devisional Patent Application can be filed in relation to each single invention
out of those multiple inventions disclosed in the Patent Patent Application.
This is but natural that Divisional Patent Application can only be filed after
filing of Parent Patent Application.
Section 16 of the Patent Act 1970 provides for filing of Divisional Patent
The same is reproduced as under:
- 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
- he further application under sub-section (1) shall be accompanied by a
complete specification, but such complete specification shall not include
any matter not in substance disclosed in the complete specification filed in
pursuance of the first mentioned application.
From bare perusal of the afore mentioned provision, i.e. Section 16 of the
Patent Act 1970 ,it is clear that for a Divisional Patent Application to
succeed, following criterion has to be satisfied.
The First one is that it has to be in respect of an invention disclosed in the
provisional or complete specification already filed in respect of the first
Another requirement for divisional Patent Application is that there should not
be duplication of claims in the two specifications i.e., the parent
specification and the divisional specification.
It means all the claims of the divisional application must be present in the
original patent application.
Another requirement is that there should not be any repetition of claim in the
provisional application, which were already present in the Parent Application.
Now coming on the facts of the case, this Appeal was filed against the order
dated 28.09.2020 passed by Controller of Patent where by divisional application
for Patent Application filed by the Appellant under No. 7863/DELNP/2014 was
The finding of Controller for rejecting the divisional application was that
subject matter of the said divisional application under No. 7863/DELNP/2014 was
that it belongs to the same broad class and group as the subject matter of
granted claims 1 to 3 of the parent application under No. 8114/DELNP/2007.
The objection of controller of Patent was that replacement of benzofuran of the
parent compound by indazole moiety in claim 1 of the divisional application did
not bring about any increase in therapeutic efficacy and showed same therapeutic
The Hon'ble High Court of Delhi , however observed that the question of
therapeutic efficacy under Section 3(d) of the Act would arise only if the
application in question was a completely independent application and did not
originate from a parent application.
The Hon'ble High Court of Delhi was pleased to set aside the finding of the
controller of Patent and observed that since the divisional application traces
its origin to the parent application, the test of therapeutic efficacy would not
apply while judging as to whether the compound claimed in the divisional
application is a valid claim in a divisional application or not.
Thus it is apparent that test of therapeutic efficacy can not be a criteria for
evaluating a divisional Patent Application.
Case Law Discussed:
Novartis AG Vs Controller of Patents and Designs
Case No. CA (Comm.IPD-PAT) 12 of 2022
Hon'ble High Court of Delhi
Prathiba M Singh
Written By: Ajay Amitabh Suman,
IPR Advocate, Hon'ble High Court of