Bombay HC Says Patent Rejection Cannot Rest On Bald Common Knowledge Claim, Remands Deepak Nitrite Case

The Bombay High Court on 6 July held that the Controller of Patents cannot reject a patent application by relying on “common general knowledge” unless the source of such knowledge is identified and it is established that the knowledge existed before the application's priority date.

Justice Arif Doctor set aside the order passed by the Assistant Controller of Patents and Designs rejecting Deepak Nitrite Limited's patent application for a free-flowing food grade sodium nitrite and its production method, and remanded the matter for fresh consideration. He held:

"A bald assertion of common general knowledge without setting out the identifiable source or basis is not only impermissible but is also wholly arbitrary and contrary to the principles of natural justice," the Court observed, adding that allowing such an approach would permit a Controller to pass orders on mere ipse dixit.

Deepak Nitrite Limited challenged an order dated 2 March 2023, through which the Assistant Controller had rejected its patent application on the ground that the claims failed to satisfy the inventive step requirement.

It argued that the Controller had rejected the product claims solely on the basis that a reduced impurity profile could not constitute an inventive step because it was “common general knowledge” that no compound could ever be completely pure. The Controller initially defended the order and sought dismissal of the petition.

The Court held that a quasi judicial authority such as the Controller cannot reject a patent application by making an unsupported reference to common general knowledge. It observed that the Controller must identify the source of such knowledge and demonstrate that it existed before the priority date of the patent application.

Relying on the Delhi High Court's decision in AGFA NV v. Assistant Controller of Patents and Designs, it held that a bald assertion of common general knowledge without identifying its basis was impermissible. It noted that such an approach would allow the Controller to decide patent applications based on personal assumptions rather than established material.

The Bench also highlighted a recurring issue in Patent Office orders by referring to recent decisions including Amogreentech Co. Ltd., Navya Network Inc., JFE Steel Corporation and Medipack Global Ventures. It observed that several orders suffered from similar defects, including unsupported claims of common general knowledge and mechanical reproduction of objections without independent reasoning.

Justice Arif said that the "infirmity lies not in the absence of departmental standards but in the recurring failure to apply them," adding that repeated remands resulted in avoidable consumption of judicial time and delays for patent applicants.

He also recorded the submission of the Respondent that the application would now be assigned to a different Controller under a newly adopted departmental practice. It held that no separate direction was required on this aspect. Therefore, he directed the Controller to reconsider Deepak Nitrite Limited's patent application afresh in accordance with the reasoning set out in the judgment and decide the matter within twelve weeks from the date on which the order was communicated.

Accordingly, the High Court remanded Deepak Nitrite Limited's patent application.