Steer Engineering Private Limited filed a divisional patent application No.202142059972 from parent No.201741044221 for a fiber reinforced thermoplastic composition and process using uPVC, ABS, and wetted continuous fibers in a twin-screw extruder with wave elements.
The Controller issued FER on 07.03.2022, appellant responded with amended claims on 05.09.2022, hearing held post notice on 10.10.2023 and submissions on 18.12.2023, then refused patent on 31.07.2024 under Sections 2(1)(ja), 59(1), and 16(2) citing lack of inventive step over D1-D7, overlap with parent, and obviousness of wetting fibers and uPVC-ABS blend.
Appellant appealed under Section 117A to Madras High Court, arguing permissible narrowing amendments, no hindsight, and technical advances shown in superior pipe properties. Court noted Rhodia principles on inventive step analysis but upheld Controller's detailed prior art comparison finding amended claims lack novelty/inventiveness, overlap parent features, and no evidence of unexpected effects, dismissing appeal on 05.01.2026.
Law Point:
Amended claims narrowing scope by incorporating specification features (e.g., "wetted" fibers) permissible under Section 59(1) if within original disclosure (Para 5).
Inventive step under Section 2(1)(ja) assessed via 5-step inquiry: identify skilled person (good skill > average), common knowledge, inventive concept, prior art differences, obviousness without hindsight (Para 7, citing Rhodia paras 21).
Divisional claims (Section 16) invalid if scope covered by ungranted parent without distinct invention (Para 11).
Case Details:Steer Engineering Private Limited Vs Joint Controller of Patents:05.01.2026: CMA(PT) No. 54 of 2024: Madras HC: Hon'ble Mr. Justice N. Senthilkumar.
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
