Cyril Bath Company Vs. Controller of Patents

Cyril Bath Company Vs. Controller of Patents and Designs: IPDPTA/8/2025:High Court at Calcutta: 01.09.2025:Justice Ravi Krishan Kapur

Facts:The Cyril Bath Company had filed a divisional patent application in India (Application No. 1376/KOLNP/2013). The Patent Office rejected this divisional application. The Controller’s order held that such modification of claims in a PCT national phase application was not possible. The Controller also stated that as per Section 10(4A) of the Patents Act and Rule 20(1) of the Patents Rules, only deletion of claims is allowed, and therefore filing a divisional application with modifications was impermissible.

Procedural Detail:The Patent Office passed its rejection order on 22 September 2023. The Cyril Bath Company filed this appeal before the Calcutta High Court under Section 16 of the Patents Act, 1970, challenging the Controller’s decision. The High Court examined whether the Controller had properly exercised his power while rejecting the divisional application.

Dispute:The core dispute was whether the applicant had the right to file a divisional patent application under Section 16 of the Patents Act, 1970, and whether the Controller was justified in rejecting the divisional application without giving reasons.

Reasoning:The Court noted that Section 16 of the Patents Act clearly permits the filing of a divisional application whenever the claims in the main application disclose more than one invention. The section expressly allows an applicant to file such an application before the grant of the parent patent. The Court criticized the Controller’s order because it simply quoted provisions of the law but gave no explanation or reasoning.

The Court relied on earlier rulings, including Toyo Engineering Corporation v. Controller General of Patents, where it was emphasized that orders must satisfy the “why” and “what” test. The “why” explains the reasoning, while the “what” shows the conclusion. An order without reasons amounts to arbitrary exercise of power. The Court also referred to Union Public Service Commission v. Bibhu Prasad Sarangi (2021) 4 SCC 516, reiterating that absence of reasons makes an order unsustainable.

The Court observed that the Controller wrongly relied only on the Boehringer Ingelheim decision (2022), without considering the later Delhi High Court decision in Syngenta Limited v. Controller of Patents (2023), which clarified the law on divisional applications. Such selective reliance showed lack of proper legal analysis.

Decision:The Calcutta High Court allowed the appeal, set aside the impugned rejection order, and remanded the matter back to the Controller of Patents. The Court directed the Controller to decide the divisional application afresh in accordance with law within three months. The Court clarified that it had not decided the merits of the patent claims and that all issues remained open for the Controller’s independent decision.

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi