COURT UPHOLDS REJECTION OF FIBER REINFORCED THERMOPLASTIC PATENT APPLICATION

Patent Act: Sections 2(1)(ja), 16(2), 59(1)

Case: Steer Engineering Private Limited vs Joint Controller Of Patents And Designs on 5 January, 2026 (Madras High Court)

Background of the Case:

In the matter of the Appellant challenging the order dated 31.07.2024 passed by the Joint Controller of Patents and Designs, Indian Patent Office, Chennai, the patent application bearing No. 202142059972 (a divisional application derived from parent Application No. 201741044221) was refused. A First Examination Report (FER) was issued on 07.03.2022, to which the Appellant filed a response along with amended claims on 05.09.2022. Thereafter, a hearing notice was issued on 10.10.2023, and written submissions dated 18.12.2023 were filed. Subsequent to the hearing, the impugned order rejecting the application was passed.

The amended claims relate to a fiber-reinforced thermoplastic composition comprising unplasticized polyvinyl chloride (PVC) and acrylonitrile-butadiene-styrene (ABS), along with wetted continuous fibers, and a process for preparing the same using a twin-screw extruder incorporating wave elements to reduce fiber breakage.

Appellant’s Argument:

The Appellant contended that the rejection was legally unsustainable and contrary to settled principles governing inventive step and claim amendments. It was submitted that the amended claims merely narrowed the scope of protection by incorporating features already disclosed in the specification, such as “wetted” fibers and “wetting” of fibers, and were therefore permissible under Section 59(1) of the Patents Act.

The Appellant further argued that the invention demonstrated significant technical advancement, as evidenced by comparative experimental data showing improved flexural strength, flexural modulus, and density when compared to conventional PVC and CPVC pipes. Reliance was placed on judicial precedents, including Rhodia Operations v. Assistant Controller of Patents and Designs, Dura-Line India Pvt. Ltd. v. Jain Irrigation Systems Ltd., and Nippon A & L Inc. v. Controller of Patents, to contend that mechanical rejection based on hindsight mosaicing of prior art is impermissible and that narrowing amendments prior to grant ought to be allowed.

It was also argued that the Respondent failed to properly identify the inventive concept and mechanically combined disparate prior art documents without demonstrating how a person skilled in the art would be motivated to arrive at the claimed invention.

Respondent’s Argument:

The Respondent maintained that the amended claims were liable to be rejected under Sections 2(1)(ja), 59(1), and 16(2) of the Patents Act. It was contended that the subject matter of claims 1 to 12 was already covered by the parent application and therefore did not qualify as a valid divisional application.

It was further argued that the claimed invention lacked inventive step, as the features relating to the use of uPVC and ABS blends, fiber reinforcement, extrusion processes, and wetting of fibers were all known in the prior art documents D1 to D7. According to the Respondent, wetting of fibers was an inherent phenomenon in extrusion processes, and the use of wave elements to reduce fiber breakage was obvious in light of the cited references.

Court Analysis and Findings:

The Court examined the principles governing inventive step and divisional applications and noted that the Respondent had undertaken a detailed comparison of the amended claims with the prior art references. The Court observed that the Respondent had identified D1 as the closest prior art and reasoned that a person skilled in the art would have been motivated to combine the teachings of D1 with those of D2 to D6 to arrive at the claimed composition and process.

The Court further noted that the Respondent had concluded that the alleged feature of “wetting” of fibers did not confer any technical distinction over the prior art, as extrusion inherently involves wetting and dispersion of fibers. The Court also found that the specification did not disclose any technically significant effect attributable to the use of wave elements specifically for uPVC/ABS composites.

With respect to amendments, the Court accepted the Respondent’s finding that the scope of the amended claims substantially overlapped with the subject matter of the parent application and that the requirements of Sections 59(1) and 16(2) were not satisfied. The Court was of the view that the Respondent had applied the correct legal test for inventive step and that the reasoning recorded in the impugned order was adequate and reasoned.

Conclusion:
The Court held that the impugned order did not suffer from any legal infirmity or procedural irregularity. The Respondent had correctly concluded that the amended claims lacked inventive step and were impermissible in view of the parent application. Accordingly, the appeal was dismissed. No order as to costs was made.

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COURT HOLDS WRIT PETITION AGAINST OPPOSITION BOARD RECOMMENDATION NOT MAINTAINABLE

Patents Act: Section 2(1)(j), 2(1)(ja), 3(d), 10, 25, 59; Section 117A (Appeal)

Case: E.R. Squibb; Sons Llc vs Union Of India on 5 January, 2026 (Madras High Court)

Case Background

Indian Patent No. 340060 was granted in respect of an invention titled “Human Monoclonal Antibodies to Programmed Death-1 (PD-1) for use in Cancer”, relating to a cancer treatment drug. The patent originated from Patent Application No. 5057/CHEMP/2007, being the national phase of International (PCT) Application No. PCT/JP2006/209606 filed on 02.05.2006 and published as WO2006/121168 A1 on 16.11.2006.

The third respondent filed a post-grant opposition under Section 25(2) of the Patents Act, 1970. Pursuant thereto, the Opposition Board issued the impugned recommendation.

After the patentee filed reply evidence, the opponent submitted rejoinder evidence. The petitioners thereafter filed a Miscellaneous Petition challenging the maintainability of the rejoinder and the evidence filed under Rule 59 of the Patents Rules, 2003. The petitioners contended that the Controller was duty-bound to first decide the maintainability of such rejoinder and evidence before forwarding the documents to the Opposition Board and before the Board rendered its recommendation.

Petitioners’ Case:

The petitioners alleged that the Opposition Board issued its recommendation without considering the evidence submitted by the patentee, including affidavits of Dr. Fife, Ms. Sarah Roques, Dr. Feltquate and Dr. Mark. According to the petitioners, several documents and technical data placed on record were neither examined nor appreciated by the Board.

It was further submitted that the impugned recommendation was undated and suffered from serious procedural infirmities. The Board concluded that the patent lacked novelty, inventive step, sufficiency and clarity. The learned senior counsel for the petitioners argued that the drug is approved and protected in 64 countries, which constituted relevant secondary considerations. Reliance was placed on Rules 57 to 60 of the Patents Rules, 2003 and on the decision of the Supreme Court in Cipla Ltd. v. Union of India to contend that the recommendation of the Opposition Board is a critical document and must be prepared strictly in accordance with statutory procedure and after considering all material evidence.

It was argued that the impugned recommendation was contrary to the scheme of the Act and therefore liable to be disregarded, and that a fresh recommendation by a reconstituted Opposition Board was necessary. The petitioners also contended that the recommendation violated principles of natural justice, as no decision on the Miscellaneous Petition relating to admissibility of rejoinder evidence was reflected in the recommendation.

Further, it was urged that the Board failed to consider secondary considerations such as long-felt need, commercial success, regulatory approvals and grants in other jurisdictions. Several judicial precedents were relied upon in support of these submissions.

Respondents’ Case:

The learned senior counsel for the third respondent raised a preliminary objection as to the maintainability of the writ petition. It was contended that the impugned recommendation is only advisory in nature and that the final decision under Section 25(4) of the Act is yet to be taken by the Controller. If aggrieved by the final order, the petitioners have an efficacious statutory remedy of appeal under Section 117A of the Act.

It was submitted that the Opposition Board was constituted under Rule 56 and considered all material on record filed under Rules 57 to 59. The further evidence filed by the petitioners under Rule 60 after the Board had submitted its recommendation was not admissible at that stage and could only be considered by the Controller during the hearing.

Reliance was placed on decisions of the Delhi High Court, including Willowood Chemicals Pvt. Ltd. v. Assistant Controller of Patents, to submit that a writ petition challenging an Opposition Board recommendation is not maintainable. It was argued that no prejudice had been caused to the petitioners since Rule 62 provides for a full hearing before the Controller and the Board’s recommendation is not binding.

It was also pointed out that the rejoinder evidence under Rule 59 had been filed in November 2021, whereas the Miscellaneous Petition was filed only in August 2022, with no satisfactory explanation for the delay.

Issue for Consideration:

The principal issue that arose for determination was whether a writ petition is maintainable against the recommendation of the Opposition Board prior to the Controller passing a final order under Section 25(4) of the Act.

Court’s Analysis

The Court examined the statutory scheme under Section 25 of the Patents Act and Rules 55A, 56, 57, 58 and 59 of the Patents Rules, 2003. A conjoint reading of these provisions shows that the role of the Opposition Board is recommendatory and that the final adjudicatory power vests in the Controller.

The Court distinguished the decisions relied upon by the petitioners, including Ashok Leyland and Optimus Drugs, on the ground that those cases involved situations where additional evidence was permitted after the recommendation or where reconstitution of the Board was done with consent of parties. In the present case, the recommendation had been issued after considering the evidence then on record.

The Court observed that Rule 62 provides a further opportunity of hearing to both parties and enables the Controller to call upon members of the Opposition Board to be present. Therefore, even if the petitioners are aggrieved by the recommendation, it is open to them to raise all objections, including alleged non-consideration of evidence, before the Controller at the final hearing.

The Court held that no prejudice would be caused to the petitioners by declining interference at this stage, since the Controller may either accept or reject the recommendation and the petitioners also have a statutory right of appeal under Section 117A.

Conclusion
The Court held that the writ petition challenging the recommendation of the Opposition Board is premature and not maintainable. Since the recommendation is not binding and the final decision is yet to be taken by the Controller after hearing both parties, judicial interference at this stage is unwarranted.

Accordingly, the writ petition was dismissed as not maintainable. No order as to costs was made, and the connected miscellaneous petitions were closed.

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INPASS NEW FEATURE UPDATE: DOWNLOAD FINAL GRANTED PATENT SPECIFICATIONS WITH EASE

The Indian Patent Advanced Search System (InPASS) has introduced a highly useful new feature that significantly enhances access to patent information—the ability to download Final Granted Patent Specifications directly from the platform. This update is a welcome step toward improving transparency, efficiency, and user convenience in India’s patent ecosystem.

What Is the New Feature?

With this update, users can now download the final granted specification of a patent directly from InPASS, eliminating the need to rely on third-party databases or manually tracking documents through the prosecution history.

Earlier, while InPASS allowed users to view bibliographic details, prosecution status, and some documents, accessing the final granted claims and specification was not always straightforward. The new feature bridges this gap.

Why Is This Update Important?

The final granted specification is the authoritative version of a patent, reflecting:

• Allowed claims after examination and amendments
• Scope of legal protection actually granted
• Final description and drawings forming part of the patent grant

Easy access to this document is crucial for:

• • Patent attorneys and agents (for infringement analysis, FTO, and drafting strategies)
  • Researchers and innovators (to understand existing technological boundaries)
  • Businesses and startups (for due diligence and competitive intelligence)
  • Academics and students (for legal and technical research

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REAFFIRMING PROCEDURAL FAIRNESS IN PATENT EXAMINATION

Section: 117A of the Patents Act

Case: Steigerwald Arzneimittelwerk GmbH vs Assistant Controller of Patents and Designs (09.01.2026)

Background & Facts

• Appellant: Steigerwald Arzneimittelwerk GmbH — a German pharmaceutical company.
• Respondent: Assistant Controller of Patents and Designs, Indian Patent Office.
• The appellant filed Indian Patent Application No. 1285/DEL/2009 titled “Method for the production of a plant-based medicament” involving a process to produce a phytopharmaceutical composition containing specified plant extracts (e.g., Iberis amara, Mentha piperita, Angelica radix, etc.).
• The Patent Office objected to the application on grounds of lack of novelty and inventive step under Section 2(1)(j) of the Patents Act, 1970, and other statutory provisions, issuing a First Examination Report (FER) in July 2015 with multiple prior art citations.
• After responses and hearings, the Assistant Controller refused the application (impugned order dated 25 July 2017). The refusal was based mainly on finding the claimed process obvious and anticipated by prior art, and that the invention lacked an inventive contribution beyond known herbal formulations and mixing steps.
• The appellant challenged the refusal under Section 117A of the Patents Act before the Delhi High Court.

Key Legal Issues

1. Whether the Assistant Controller’s refusal order adequately dealt with statutory requirements, including novelty and inventive step (Section 2(1)(j))?
2. Whether the Patent Office properly appreciated the technical distinctions and inventive contribution of the asserted mixing sequence in the claimed process?
3. Whether the order met natural justice and reasoned decision-making requirements?

Appellant’s Contentions

• The claimed method solved a known problem of inconsistent active substance content in the herbal medicament (Iberogast) by using a specific sequence of mixing plant extracts to prevent crystal formation and ensure reproducible quality.
• The Controller failed to explain why this technical feature was obvious or lacked novelty in light of cited prior art.
• The refusal order was non-speaking and lacked detailed reasoning, thereby violating principles of natural justice.
• The invention was not merely conventional admixture; rather, the specific process sequence contributed a technical effect.

High Court’s Findings

• The High Court examined the refusal order and held that the Assistant Controller’s decision lacked adequate reasoning and appreciation of the appellant’s technical submissions demonstrating novelty and inventive step.
• The court found that the Patent Office had not properly explained how the cited prior art taught or suggested the specific mixing sequence claimed, nor shown why it would have been obvious to a person skilled in the art.
• Further, the refusal order largely reproduced objections without engaging with the appellant’s written submissions and evidence; this rendered the order insufficiently reasoned and in violation of principles of natural justice and reasoned decision-making expected in patent examination.

Decision & Outcome

• The Delhi High Court allowed the appeal, set aside the Assistant Controller’s refusal order, and remanded the patent application back to the Patent Office for fresh consideration.
• The remand came with directions that the Controller must:
  • Afford the appellant a full and fair hearing,
  • Address all objections properly,
  • Provide a detailed speaking order considering novelty, inventive step, and technical distinctions vis-à-vis cited prior art.

Significance & Legal Principles

• The judgment reinforces that patent refusal orders must be reasoned and address submissions and prior art distinctions explicitly.
• Controllers cannot issue cryptic or boilerplate refusals; they must demonstrate justification for conclusions on novelty and inventive step.
• The decision underscores the importance of natural justice in patent prosecution detailed reasoning supports transparency, fairness, and proper application of patentability standards.

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AMENDMENT OF PLEADINGS AND ADVERTISING DISPARAGEMENT IN COMMERCIAL DISPUTE

Case: Colgate Palmolive Company & Anr vs Dabur India Ltd on 12 January, 2026

Background

• Plaintiffs: Colgate Palmolive Company & another global oral care brand owner.
• Defendant: Dabur India Ltd  Indian consumer products company.
• The suit was filed in October 2019 seeking, among other reliefs, a permanent injunction restraining Dabur from using the Colgate trademark or packaging of Colgate Strong Teeth Toothpaste in its advertisements, and from making misleading statements regarding Colgate’s products and ingredients.
• In 2019, the Court granted an interim injunction restraining Dabur’s original advertisement for likely infringing packaging and disparaging the use of fluoride in toothpaste. Dabur was permitted to publish a modified advertisement with changes.
• In 2025, Dabur launched new advertisements (20 March 2025 & 14 April 2025) allegedly disparaging fluoride an ingredient in Colgate’s products- by implying excessive fluoride intake causes health problems. The Plaintiffs sought to amend their original plaint (filed six years earlier) to expressly challenge these newer ads.

Issues Before the Court

1. Whether the plaint could be amended after six years to include challenge to the 2025 advertisements under Order VI Rule 17 CPC.
2. Whether the challenge to fluoride-related advertising was within the scope of the original lawsuit, or constituted a new cause of action, requiring a separate suit.

Plaintiffs’ Arguments

• The 2025 ads continued the same ground of disparagement (especially regarding fluoride as harmful) that was already part of the original suit’s allegations.
• All relevant facts and pleadings were already before the Court, and amendment would merely clarify scope and avoid multiplicity of suits.

Defendant’s Arguments

• The amendment sought was beyond the scope of the original plaint and introduced new causes of action after extensive delay.
• Allowing amendment after six years would delay proceedings and contravene the objectives of the Commercial Courts Act 2015.
• Continuous advertisement campaigns did not automatically extend the original cause of action to 2025 ads.

Court’s Analysis & Findings

• The Court carefully reviewed the original pleadings and found that the issue of ingredient disparagement particularly regarding fluoride  was already pleaded in the 2019 plaint and in related interim applications.
• It held that the 2025 advertisements were variations of Dabur’s ongoing fluoride messaging campaign that began in 2019, and the issue of fluoride disparagement was already part of the controversy raised in the original suit.
• However, the Court found no necessity to amend the plaint to include specific references to the 2025 advertisements, because the existing pleadings already covered the core issue of ingredient disparagement.
• Further, the Court noted that permitting belated amendment after six years without sufficient justification would run counter to the purpose of procedural rules and impede timely adjudication.

Decision

• The Court rejected the prayer to amend the plaint under Order VI Rule 17 CPC.
• It directed that the impugned advertisements of March and April 2025 be taken on record by the Plaintiffs as additional documents under Order XI CPC and treated as part of the ongoing suit.

Significance

This judgment clarifies that:

• In a long-running commercial suit, amendments to pleadings after substantial delay are permissible only if necessary for effective adjudication, not merely to restate facts already covered.
• Allegations of generic disparagement of a product ingredient already included in a suit do not require fresh causes of action for subsequent advertising campaigns; existing pleadings may suffice if the core issue remains the same.

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