Deepak Nitrite Limited vs The Assistant Controller General Of Patents And Designs
- Court
- Bombay High Court
5-COMMP-107-2025
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL MISCELLANEOUS PETITION NO. 107 OF 2025
Deepak Nitrite Limited …Petitioner
Versus
The Assistant Controller General of Patents and Designs …Respondent
_______
Mr. Hiren Kamod a/w. Mr. Priyank Gupta, Mr. Abhishek Shrivastava, Ms. Aditi
Sharma, Mr. Rajspandan Nigam, Ms. Vithika Sharma, Mr. Deepak Pawar, Mr.
Abhijeet Gidde, Ms. Sanika Gupte, Mr. Amey Kokare, Mr. harshit Bansal and
Ms. Shravani Deshmukh for the Petitioner.
Mr. Yashodeep Deshmukh a/w. Mr. Ashutosh Mishra, Mr. Rutwik Rao Vaidehi
Deshmukh for the Respondent.
_______
CORAM : ARIF DOCTOR, J.
th
RESERVED ON : 8 MAY 2026
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PRONOUNCED ON : 6 JULY 2026
JUDGMENT
1. The present Petition has been filed under the provisions of Section 117A of
nd
the Patents Act, 1970 (“ the Patents Act” ), and impugns an order dated 2
March 2023 (“ the Impugned Order ”) passed by the Respondent, i.e., the
Assistant Controller of Patents & Designs, Patent Office, Mumbai, refusing
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A Free-
the Petitioner’s Patent Application No. 202021019409, titled "
Flowing Food Grade Sodium Nitrite and Production Method Thereof " under
Section 15 of the Patents Act, on the ground that the subject matter of claim
nos. 1 to 8, as amended and filed, do not meet the requirements of Section
2(1)(ja) of the Patents Act.
Submissions on behalf of the Petitioner:
2. Mr. Kamod, Learned Counsel for the Petitioner, has assailed the Impugned
Order on the following two grounds, corresponding to the two limbs of the
claim, viz. (i) product claims and (ii) process claims.
3. Regarding the product claims (Claims 1 to 3), Mr Kamod pointed out that, on
the face of the Impugned Order, the claimed product is distinguished from the
cited prior art by its impurity profile, i.e., the presence of impurities in
amounts different from those in the prior art. He pointed out that
notwithstanding this admitted point of distinction, the Respondent has refused
the product claims on the single footing that " reduction in impurities " cannot
constitute an inventive step for the reason that it is " common general
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knowledge " that no compound is ever 100% pure. He, however, took pains to
point out that the Impugned Order does not ( i ) cite any reference, treatise,
standard text, or other identifiable source from which the asserted " common
general knowledge " is said to be drawn; ( ii ) consider whether the specific
impurity profile claimed in the Petitioner's application is disclosed or
suggested in the cited prior art documents; or ( iii ) engage with the Petitioner’s
submissions explaining that the controlled impurity profile is tailored to the
achievement of a food grade, free-flowing sodium nitrite of the kind claimed.
4. Regarding the process claims (Claims 4 to 8), he pointed out that independent
Claim 4 discloses a multi-step integrated process for obtaining free-flowing
food-grade sodium nitrite, comprising, inter alia, ( ) dissolving sodium nitrite
i
powder in water to obtain a sodium nitrite liquor; ( ii ) heating the liquor under
controlled temperature; ( iii ) feeding the liquor to an evaporator to obtain a
slurry mass; ( iv ) filtering the slurry mass through a centrifuge to separate wet
cake and mother liquor; ( v ) drying the wet cake in a drying unit having a cold
zone; and ( vi ) coating the dried sodium nitrite material with a food-grade anti-
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caking agent. He submitted that the inventive contribution lies in the
synergistic combination and specific sequencing of the said steps, taken as a
unit. He, however, pointed out that the Respondent had refused the process
claims by isolating a single step, namely the filtration step, and holding such
filtration to be commonly performed in the laboratory and, on that basis, failed
to consider the invention as a whole. He submitted that the Impugned Order
was, therefore, in this respect, a non-speaking order and was bereft of any
reasoned analysis of the integrated process taken as a unit, which should have
been assessed as such.
5. Mr. Kamod then placed reliance upon the decisions in Medipack Global
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Ventures Private Limited v. Assistant Controller of Patents and Designs , F.
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Hoffmann-La Roche Ltd. v. Cipla Ltd. , Groz-Beckert KG v. Union of India
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and Ors. ; and AGFA NV and Anr. v. The Assistant Controller of Patents
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and Designs to point out that when assessing inventive step, it is incumbent
1 rd
Order dt. 23 March 2026 in COMMP (L) No. 19258 of 2024 passed by Bombay High Court.
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2015 SCC OnLine Del 13619.
3
2023 SCC OnLine Cal 111.
4
2023 SCC OnLine Del 3493.
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upon the Controller to inter alia , (i) to identify ordinary person skilled in art;
(ii) to identify inventive concept in the patent; (iii) to impute common general
knowledge in the art at the priority date, to an ordinary person; (iv) to identify
differences; (v) to identify the source of asserted common general knowledge
(vi) to consider the invention as a whole and not in parts; (vii) to give
independent reasons supporting grant/rejection of the patent application.
6. Mr. Yashodeep Deshmukh, Learned Counsel appearing on behalf of the
Respondent, at the outset submitted that there was no infirmity in the
Impugned Order and that the Respondent had refused the Petitioner’s Patent
Application after due examination and application of mind. He thus submitted
that the Petition ought to be dismissed in limine .
7. However, upon being asked by this Court to point out from the Impugned
Order where the independent analysis of the process claims for ‘inventive
step’ was in the Impugned Order in light of the test laid down in the decisions
upon which reliance was placed by the Petitioner, in particular the decision of
the Delhi High Court in the case of F. Hoffmann-La Roche Ltd. v. Cipla . Mr.
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Deshmukh submitted that the Impugned Order must be read as a whole and
the absence of such independent analysis would not ipso facto render the
ultimate conclusion erroneous. He, however, fairly conceded that the
Impugned Order did not contain the analysis in the manner which was laid
down by the Delhi High Court in the case of F. Hoffmann-La Roche Ltd. and
followed by this Court in the case of Navya Network Inc. v. Assistant
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Controller of Patents and Designs .
8. Mr. Deshmukh then, without conceding to the fact that the Impugned Order
was in any manner infirm, fairly conceded, and it would have been more
appropriate for the Respondent to have considered the invention as a whole.
Therefore, qua the process claims, i.e., Claims 4 to 8, Mr. Deshmukh has very
fairly conceded that the matter can be remanded for fresh consideration.
9. However, in the context of the product Claims, i.e., Claims 1 to 3, he opposed
any remand, contending that the Impugned Order, in that respect, was
sustainable on the footing that the difference in the impurity profile was, in
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Order dt. 15 April 2026 in COMMP (L) No. 15327 of 2025 passed by Bombay High Court.
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any event, accounted for by common general knowledge. However, on a query
from the Court as to what, according to him, would constitute "common
general knowledge" and where from the record the same could be discerned,
Mr Deshmukh was unable to do so.
10. In my view, it is wholly impermissible for the Respondent, in a quasi-judicial
order under Section 15 of the Patents Act, to invoke “ common general
knowledge ” as a self-sufficient ground for rejecting a patent application
without setting out and substantiating the sources of such common general
knowledge on the day of patent application. This position is well-settled by
the Delhi High Court in AGFA NV v. Assistant Controller of Patents and
Designs , wherein the Delhi High Court, inter alia, held that the Controller is
required to identify the source of the asserted common general knowledge and
to demonstrate that such source was published prior to the priority date of the
application.
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11. common
In light of the above, in my unhesitating view, a bald assertion of “
general knowledge
” without setting out the identifiable source/s and/or basis
common general knowledge
on which such “ ” is asserted is not only
impermissible but is also wholly arbitrary and contrary to the principles of
natural justice. To allow this would, in my view, effectively amount to
permitting a Controller to pass an order on his mere ipse dixit by relying upon
undisclosed “ common general knowledge ” or personal knowledge without
recording any reasons. Needless to state, such an approach would also deprive
a party against whom an Order is passed from having the benefits of the
reasoning on which the order was passed and therefore affect the ability of
such a party to effectively challenge the same.
12. Hence, in my view, the present Petition would have to be allowed, the
Impugned Order would have to be set aside, and the matter remanded back
for consideration afresh.
13. Mr. Deshmukh at this stage, upon instructions, informs me that the office of
the Controller of Patents has now put in place a system whereunder, upon
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remand, the application would be assigned to a different Controller, other than
the one who passed the Impugned Order. The statement is accepted. In view
of the statement made by the Learned Counsel for the Respondent, a specific
direction to place the matter before the new Controller is not required. While
this is a positive step, it does not take care of the endemic problem as noted
by the Delhi High Court in the case of Huhtamaki OYJ v. Controller of
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Patents of Controllers passing Orders by reproducing the objections, without
even any application of mind.
14. Unfortunately, nothing seems to have changed, and the frequency with which
such orders are passed is only increasing. This Court has recently in the
following decisions Amogreentech Co. Ltd. v. Assistant Controller of
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Patents & Designs ; Navya Network Inc. v. Assistant Controller of Patents
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and Designs , JFE Steel Corporation v. Controller of Patents & Designs ,
and Medipack Global Ventures Private Limited v. Assistant Controller of
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2023 SCC OnLine Del 3272.
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2023 SCC OnLine Bom 1247.
8
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Order dt. 3 February 2026 in COMMP No. 52 of 2025 passed by Bombay High Court.
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Patents and Designs set aside orders of the Patent Office and remanded
matters for fresh consideration on account of similar and recurring infirmities,
such as (i) recurring deficiencies in patent examination, including denial of a
fair opportunity to meet objections; (ii) failure to consider the applicant’s
submissions and evidence; (iii) absence of reasoned findings on statutory
objections; (iv) inadequate claim construction and inventive-step analysis; (v)
reliance on hindsight or unsupported assertions of common general
knowledge; (vi) improper combination of prior art; (vii) mechanical
reproduction of material without independent reasoning; and (viii) non-
speaking orders that frustrate effective appellate review.
15. I must also note that the infirmity lies not in the absence of departmental
standards but in the recurring failure to apply them. The directions issued by
various Courts have repeatedly addressed these very deficiencies. Yet, despite
this, the pattern of unreasoned or inadequately reasoned orders has
unfortunately persisted. The consequence is that this Court is frequently left
with little option but to set aside and remand such orders for fresh
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consideration, even in cases where the ultimate conclusion of the Controller
may possibly, upon a proper analysis, prove to be sustainable. Such orders
nevertheless require interference because they are lacking in (i) adequate
reasoning, (ii) analysis of the rival submissions, (iii) discussion of the cited
prior art and statutory provisions, (iv) objective findings supported by material
on record, and (v) a discernible chain of reasoning connecting the facts to the
conclusions ultimately reached. Remands necessitated solely on account of
such orders result in avoidable consumption of judicial time, duplication of
effort within the Patent Office, and additional delay and expense for
applicants.
16. The Courts have consistently held that the Controller is under a mandatory
obligation to pass a well-reasoned and speaking order which demonstrates
independent application of mind and consider the objections raised and the
responses thereto and the prior art relied upon. The mere reproduction of the
FER, hearing notice, opposition pleadings, prior art documents cited, or
positive findings that an invention lacks novelty, inventive step, or
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patentability would not qualify as a reasoned and speaking order. The
reasoning must disclose the basis on which the Controller has arrived at the
conclusions recorded in the order.
17. Hence, the following Order:
i. The Petition is disposed of in terms of prayer clause (a), and the Impugned
nd
Order dated 2 March 2023 is set aside.
ii. The Controller to decide the Patent Application No. 202021019409 after
ensuring compliance with what is set out in paragraph 15 and 16 above.
iii. The Application to be decided within a period of twelve weeks from the
date on which a copy of this Order is communicated to the Controller.
[ARIF S. DOCTOR J.]
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