The Madras High Court on February 8, 2024, in Techpolymers Industria E Comercio LTDA vs. The Deputy Controller of Patents and Designs [(T)CMA(PT)/180/2023, (OA/SR.11/2020/PT/CHN)], addressed the rejection of a patent application concerning thermoplastic polymers used in injection-molded articles.
Techpolymers sought a patent for an invention related to the use of thermoplastic polymers in preparing injection-molded articles. The Deputy Controller of Patents and Designs rejected the application on following two grounds:
- Lack of Inventive Step: The Controller cited prior art, suggesting the invention was obvious and lacked novelty.
- Non-compliance with Section 59: The Controller believed that amendments made to the patent claims extended beyond the original content, violating Section 59 of the Patents Act, 1970.
With regard to Inventive Step, the Court observed that the Controller had merely listed prior art references without adequately considering the applicant’s explanations distinguishing the invention from existing knowledge. Further, the Court stated that, “…Necessarily, the ground for rejection founded on Section 2(1)(ja) has to fail and it deserves to be reconsidered.”
With regard to Section 59 Compliance,the original claim referred to the “use of a lubricated polyamide for the preparation of articles by injection molding,” while the amended claim described “a method of preparing an article… using a lubricated polyamide.” In this regard, the Court stated that, “Turning to the other ground of rejection founded on Section 59 is concerned, the Controller appears to have focused more on the semantics of the language employed by the appellant in stating its claim….” Further, after looking into the substance, the Court did not find anything therein which may indicate that the amended claim goes beyond the original claim.
The Madras High Court set aside the Controller’s decision and remanded the matter for de novo consideration by a different Controller. The Court directed that the reconsideration be expedited, given the application’s original filing date in 2012, and completed within six months.
This judgment emphasizes the need for a thorough evaluation of patent claims, encouraging Controllers to focus on the underlying inventive concepts rather than just linguistic nuances. Thereby, present judgment has also maintained possibility to amend use claim to method claim based on substance of the claim. It also stresses the importance of procedural fairness in patent examinations, ensuring that applicants’ explanations and amendments are given proper consideration.
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