Calcutta High Court Reopens Owens Corning’s Glass Fibre Patent Bid
Calcutta High Court Reopens Owens Corning’s Glass Fibre Patent Bid
Introduction
The Calcutta High Court has set aside a Patent Office order rejecting a patent application filed by OCV Intellectual Capital LLC, a subsidiary of Owens Corning. The Court held that the refusal was passed without proper analysis of novelty and inventive step and without adequately engaging with the technical submissions made by the applicant. The judgment was delivered on January 6, 2026 by Justice Ravi Krishan Kapur in OCV Intellectual Capital LLC v. The Controller General of Patents.
Factual Background
The patent application, titled “Composition for High Performance Glass, High Performance Glass Fiber and Articles Therefrom,” relates to a specialised glass fibre composition intended to deliver the strength and performance of high-end S-Glass while enabling production through a more cost-effective process using refractory-lined furnaces. The company had initially filed the application internationally in 2007 before entering the Indian national phase. During examination, the Patent Office rejected the application on the grounds that the claimed invention lacked novelty and inventive step and amounted to a mere admixture of known substances without any demonstrated synergy.
Procedural Background
Aggrieved by the rejection, OCV Intellectual Capital LLC challenged the order before the Intellectual Property Division of the Calcutta High Court (IPDPTA/34/2022). The Patent Office defended its refusal by asserting that the claimed glass composition had already been disclosed in earlier documents and that no technical advancement had been shown.
Issues
1. Whether the Patent Office adequately analysed novelty and inventive step before rejecting the patent application.
2. Whether the refusal order provided sufficient reasoning to establish that the invention was covered by prior art or rendered obvious.
3. Whether the Patent Office failed to consider the doctrine of “teaching away” while assessing inventive step.
Contentions of the Parties
The appellant contended that the Patent Office failed to assess the invention as a whole and ignored submissions demonstrating that prior art in fact discouraged the claimed invention. It was argued that the invention addressed a specific technical problem by achieving enhanced performance through a cost-effective manufacturing process, and that the refusal order merely listed prior art references without explaining how they anticipated or rendered the invention obvious. The respondent, on the other hand, maintained that the claimed composition was already disclosed in earlier documents, that no inventive step was established, and that the composition was only an admixture of known substances lacking synergy.
Reasoning and Analysis
The Court found that the refusal order did not reflect a reasoned technical evaluation of the patent claims. It observed that the impugned order simply cited prior art references without explaining how those references covered the patent claims or rendered the invention obvious. There was no meaningful discussion of the applicant’s technical submissions, nor any analysis of the technical problem sought to be addressed by the invention.
The Court explained the doctrine of “teaching away,” noting that it applies where prior art discourages a person skilled in the art from pursuing the direction taken by the invention. If prior art points away from the invention, such circumstance becomes relevant in determining inventive step.
The Court found that the Patent Office had not examined whether the prior art taught away from the claimed invention or whether the claimed composition produced any technical effect. It further noted that the contention that the composition enabled lower-cost high-performance glass through a direct melt process in refractory-lined furnaces had not been dealt with in the refusal order. The Court emphasised that patent refusal orders must contain a clear and reasoned analysis of novelty and inventive step, including engagement with the applicant’s submissions and logical reasoning connecting prior art to the conclusions reached. The absence of such reasoning rendered the decision unsustainable.
Decision
Accordingly, the Calcutta High Court set aside the refusal order passed by the Patent Office and remanded the matter for fresh consideration. The Court directed that the application be re-examined in accordance with law, with due consideration to the technical submissions made by the applicant and with a reasoned analysis of novelty, inventive step and prior art.
In this case the appellant was represented by Mr. Adarsh Ramanujan, Ms. Yamini Mookherjee, Mr. Sonal Mishra, Ms. Kaushiki Roy, Ms. Garima Mehta and Mr. Suryaneel Das, Advocates. Meanwhile the respondent was represented by Mr. Swatarup Banerjee and Mr. Shankharit Chakraborty, Advocates.
