Controller cannot invoke "common general knowledge" to reject patent applications without substantiating specific sources and publications.

In brief

The question

1. Whether the Controller can invoke "common general knowledge" as a ground for rejection without substantiating the source or publication date of such knowledge

The court held

The Court allowed the Petition and set aside the Impugned Order dated March 2, 2023

It also directed

The matter is remanded to the Controller for fresh consideration, with a direction that it be assigned to a different Controller. The Court held that a valid order must demonstrate an independent application of mind, analyze rival submissions, and provide a discernible chain of reasoning. The fresh decision must be rendered within twelve weeks

01Facts

The Petitioner challenged an order dated March 2, 2023, passed by the Respondent (Assistant Controller) refusing Patent Application No. 202021019409 for "A Free-Flowing Food Grade Sodium Nitrite and Production Method Thereof" under Section 15 of the Patents Act

pp. 1-2

The Respondent rejected the product claims (Claims 1-3) asserting that a reduction in impurities is "common general knowledge" and rejected the process claims (Claims 4-8) by isolating a single step (filtration) rather than evaluating the integrated process as a whole

pp. 2-4

The Petitioner contended that the order was a non-speaking order, lacked source citations for "common general knowledge," and failed to identify the person skilled in the art

pp. 3-5

02Issues

i.1. Whether the Controller can invoke "common general knowledge" as a ground for rejection without substantiating the source or publication date of such knowledge

p. 7 · ¶ 10

ii.2. Whether the Controller erred in refusing process claims by isolating individual steps rather than assessing the inventive step of the synergistic combination as a whole

p. 4 · ¶ 4 · p. 6 · ¶ 8

iii.3. Whether the impugned order qualifies as a "reasoned and speaking order" consistent with principles of natural justice

pp. 11-12 · ¶ 15-16

03Law Applied

The court applied Section 2(1)(ja) regarding "inventive step" and Section 15 of the Patents Act, 1970

p. 2

It relied on the test for assessing inventive step established in F. Hoffmann-La Roche Ltd. v. Cipla Ltd., which requires identifying the person skilled in the art, the inventive concept, and the differences between prior art and the invention

pp. 4-5

Furthermore, it applied the principle from AGFA NV v. Assistant Controller of Patents and Designs, mandating that any assertion of "common general knowledge" must be backed by identifiable sources published prior to the priority date

p. 7 · ¶ 10

Provisions in the judgment · 2 · Linked ones open on LawLens

Patents Act, 1970 Section 2 Section 15

04Reasoning

The Court found the Respondent’s order legally flawed as it relied on "common general knowledge" as a self-sufficient ground for rejection without identifying any specific treatise or reference

p. 3 · ¶ 3 · p. 8 · ¶ 11

The Court observed that such a "bald assertion" is arbitrary and prevents the Petitioner from effectively challenging the decision

p. 8

Regarding process claims, the Respondent’s counsel conceded that the invention should have been considered as a whole rather than isolating the filtration step

p. 6 · ¶ 8

The Court noted a recurring pattern of "non-speaking orders" from the Patent Office that mechanically reproduce objections without independent reasoning, which frustrates appellate review and wastes judicial time

pp. 10-11 · ¶ 14-15