Madras High Court Remands Pave The Way For Patent Grants: A Shift In Divisional Application Practice Post-Syngenta

In the evolving landscape of Indian patents law, divisional applications have been a hotbed of debate. These applications allow applicants to split out additional inventions from a parent filing, but their allowability is hinged on interpretations of Section 16 of the Patents Act, 1970. The 2022 Delhi High Court ruling in Boehringer Ingelheim International GmbH v. The Controller of Patents restricted the scope of filing divisionals only to cases where plurality of inventions was evident solely in the parent's claims, with basis of the divisional claims found merely in the original disclosure being deemed insufficient to support a divisional . This led to numerous refusals by the Indian Patent Office (IPO).

However, the 2023 Delhi High Court Division Bench decision in Syngenta Limited v. Controller of Patents and Designs modified the Boehringer determination by reaching a conclusion that divisionals could also stem from original disclosures in the provisional or complete specification, and not solely from original statement of claims, as held in Boehringer. This shift has had ripple effects, as seen in three recent cases remanded by the Madras High Court (also known as the Chennai High Court) on July 26, 2024. In each, the court directed de novo examination with fresh hearings, leading to grants by the IPO. These decisions underscore a more applicant-friendly approach to divisionals, aligning with Syngenta's principles.

Let's dive into the three cases, all handled by Assistant Controller Anshuman Verma at the Patent Office, Delhi, post remand. They highlight how post-remand scrutiny focused on inventive step rather than divisional eligibility.

All the 3 cases have been prosecuted by the author, till grant.

Case Summaries

1. M A E Maschinen- und Apparatebau Götzen GmbH (Application No. 201748028185) – "Wheelset Press"

Filed on August 8, 2017, as a divisional of parent application 2125/CHENP/2010 (granted August 19, 2019), this invention relates to a wheelset press for pressing or pulling wheels/brake disks onto/off railway vehicle axles. Key features include an O-shaped press frame integrating pressure beams and connecting columns for enhanced structural integrity.

• Initial Refusal (December 8, 2023): Based on Boehringer, citing lack of unity under Section 10(5) and duplication of parent claims, and refusing to follow the DB decision in Syngenta
• Appeal (CMA (PT) No. 16 of 2024): Madras High Court (MHC) allowing the Appeal remanded to PO for fresh examination per Syngenta.
• Post-Remand (Hearing: May 27, 2025; Written Submission: May 29, 2025): Objections shifted to inventive step under Section 2(1)(ja), citing prior art (EP1201350A2 and CN2644075Y). The applicant distinguished the O-shaped frame as providing unique compactness and robustness not obvious from the cited documents. The Controller agreed, noting no integration of beams and columns in prior art.
• Outcome: Granted on July 30, 2025.

2. Victaulic Company (Application No. 201948026247) – "Coupling Having Gasket Pocket of Varying Depth"

Filed on July 1, 2019, as a divisional of parent 3752/CHENP/2014 (granted May 11, 2021), this covers a pipe coupling with an eccentric gasket pocket (varying depth due to offset curvature centers) to control gasket distortion.

• Initial Refusal (December 8, 2023): Rejected under Boehringer for claim duplication. Refusal to follow DB decision in Syngenta.
• Appeal (CMA (PT) No. 15 of 2024): Allowing the appeal MHC remanded for de novo examination.
• Post-Remand (Hearing: June 9, 2025; Written Submission: June 10, 2025): Inventive step objections cited prior art (EP2112414A1, US20080284161A1, US20070090646A1). The applicant argued the eccentric pocket's static distortion control was novel, not suggested by uniform or angular pockets in prior art. The Controller found the variable depth via non-coincident centers inventive.
• Outcome: Granted on August 14, 2025.

3. Victaulic Company (Application No. 201948026248) – "Coupling Having Gasket Pocket of Varying Depth"

Also filed July 1, 2019, as another divisional of the same parent as mentioned at 2, this focuses on a variant where the back wall has distinct curved portions for varying pocket depth.

• Initial Refusal (December 8, 2023): Similar Boehringer-based rejection.
• Appeal (CMA (PT) No. 14 of 2024): Remanded identically.
• Post-Remand (Hearing: June 10, 2025; Written Submission: June 11, 2025): Objections under inventive step cited US20080284161A1, EP2112414A1, and newly found US4391458A. Differentiation emphasized the multi-portion back wall's unique geometry for gasket control, absent in prior uniform designs. The Controller concurred, highlighting no suggestion of farther-spaced second portions.
• Outcome: Granted on September 1, 2025.

Key Comparisons Across the Cases

To illustrate the similarities and nuances, here's a table summarizing the core elements:

All cases followed a parallel trajectory: initial refusals under Boehringer, High Court remands applying Syngenta, and grant by PO post-remand after overcoming inventive step hurdles through detailed differentiations and with determination of divisional eligibility.

The Cost of Unlawful Initial Refusals

The initial refusals by the IPO in December 2023, grounded in the Boehringer interpretation, were ultimately deemed unlawful in light of the subsequent Syngenta ruling and the Madras High Court's remands. These refusals unnecessarily prolonged the prosecution process, requiring appeals and de novo examinations that delayed grants by over a year and a half. Given that patent terms in India are fixed at 20 years from the filing date, such delays effectively ruin vital years of the patent's enforceable life. For instance, in Case 1 (filed 2017), the grant in 2025 leaves only about 3years of protection instead of a potential 9 to 10 years had it been granted earlier. Similarly, the 2019 filings now have roughly about 7 years' protection post-grant, shortened by the erroneous refusals. This underscores the need for the IPO to align promptly with evolving judicial precedents to avoid infringing on applicants' rights and innovation incentives.

Legal Implications and Broader Impact

The grant of these divisionals signals a pivotal change in IPO practice. By remanding for merits-based review, the Madras High Court ensured divisionals aren't dismissed solely on formal grounds but evaluated holistically. This aligns with Syngenta's view that specifications can disclose multiple inventions, even if not explicitly claimed in the parent.

For patentees, , it's a win: It encourages strategic divisional filings to protect variants without fear of outright rejection. However, applicants must still demonstrate clear support in the parent specification and non-obviousness over prior art.

Critics might argue this liberalizes divisionals, potentially leading to "evergreening," but the decisions emphasize distinct scopes—e.g., Victaulic's two divisionals target different embodiments, without overlap.

As India harmonizes with global standards (e.g., EPO and USPTO allow specification-based divisionals), these cases could inspire more confidence in India's IP system. At the same time, patentees should be prepared to map the divisional claims meticulously to parent disclosures, clearly distinguish the invention claimed in divisional over that claimed in the parent, and must have robust inventive step arguments in favour of the divisional claims.

In conclusion, the Madras High Court's interventions in these 2024 appeals have breathed new life into divisional applications, culminating in 2025 grants. This trilogy exemplifies how judicial clarity can refine patent prosecution, foster innovation while maintaining rigor.

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