Inventive step assessment frequently requires the Patent Office to determine what formed part of the common general knowledge available to a person skilled in the art on the relevant date. However, “common general knowledge” cannot operate as an undefined or self-sufficient ground for refusing a patent application. Where such knowledge is relied upon to establish obviousness, the Controller must identify its basis and demonstrate that the relied-upon material formed part of the relevant knowledge before the priority date. Equally, where an invention comprises an integrated combination of process steps, inventive step must be assessed by considering the invention as a whole rather than by isolating individual steps and labelling them routine.
In a curt and assertive comment on the infirmities in the working of the patent office and arbitrary refusal of a patent application based on a bald assertion of common general Knowledge in Deepak Nitrite Limited v. The Assistant Controller General of Patents and Designs [Commercial Miscellaneous Petition No. 107 of 2025, decided on July 6, 2026], the Bombay High Court took note of recurring infirmities in Patent Office refusal orders and observed that the problem lies not in the absence of departmental standards, but in the recurring failure to apply them. In the present case, the Court found that the respondent Controller had rejected a patent application filed by Deepak Nitrite Limited by relying on “common general knowledge” without identifying the source of such knowledge or establishing that it existed before the priority date of the application.
The Court held that “a bald assertion of “common general knowledge” without setting out the identifiable source/s and/or basis on which such “common general knowledge” is asserted is not only impermissible but is also wholly arbitrary and contrary to the principles of natural justice.” The Court observed that permitting such an approach would effectively allow the Controller to decide patent applications on mere ipse dixit, by relying on undisclosed common general knowledge or personal knowledge without recording reasons.
The Court took this opportunity to clarify that unsupported assertions of common general knowledge violate principles of natural justice that mandate the Controller to clearly substantiate the prior existence of the claimed invention. The Court stated that allowing such an approach would permit a Controller to pass orders on mere ipse dixit. The Court also questioned the approach of the Controller wherein assessment of inventive step in an integrated multistep process in such cases was done based on known routine parts analysis. The Court asserted that integrated multi-step processes must be assessed as a whole rather than step-by-step consideration of routine parts.
Factual Matrix
Patent Application No. 202021019409, titled “A Free-Flowing Food Grade Sodium Nitrite and Production Method Thereof”, was refused by the Patent Office under Section 15 of the Patents Act, 1970, on the ground that the subject matter of Claims 1 to 8, as amended, did not meet the requirements of inventive step under Section 2(1)(ja) of the Act. Aggrieved by the refusal order dated March 2, 2023, the applicant, Deepak Nitrite Limited, preferred an appeal before the Bombay High Court.
Appellant’s Case
In relation to the product claims, i.e., Claims 1 to 3, the appellant submitted that the claimed product was distinguished from the cited prior art by its impurity profile, namely the presence of impurities in amounts different from those disclosed in the prior art. However, despite this admitted distinction, the respondent Controller refused the product claims on the footing that “reduction in impurities” could not constitute an inventive step because it was “common general knowledge” that no compound is ever 100% pure.
The appellant pointed out that the respondent Controller had not cited any reference, treatise, standard text or other identifiable source from which the asserted common general knowledge was said to have been drawn. The appellant relied on the Delhi High Court’s ruling in AGFA NV v. Assistant Controller of Patents and Designs, wherein it was held that a mere assertion of common general knowledge, without identifying its basis, is impermissible.
In relation to the process claims, i.e., Claims 4 to 8, the appellant submitted that independent Claim 4 disclosed a multi-step integrated process for obtaining free-flowing food-grade sodium nitrite. According to the appellant, the inventive contribution lay in the synergistic combination and specific sequencing of the process steps taken as a whole. However, the Controller had isolated the filtration step, treated such filtration as commonly performed in laboratories and, on that basis, refused the claims without analysing the integrated process as a whole.
Respondent Controller’s Reply
The respondent Controller submitted that there was no infirmity in the impugned order and that the patent application had been refused after due examination and application of mind. In relation to the product claims, the respondent maintained that the difference in the impurity profile was accounted for by common general knowledge.
However, when the Court sought to ascertain the basis of the asserted common general knowledge, the respondent was unable to point to any material on record from which such knowledge could be discerned. In relation to the process claims, the respondent also fairly conceded that it would have been more appropriate to consider the invention as a whole and that Claims 4 to 8 could be remanded for fresh consideration.
Court’s Analysis and Findings
The Court held that it is wholly impermissible for the Controller, while passing 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 knowledge. Relying on AGFA NV, the Court observed that the Controller is required to identify the source of the asserted common general knowledge and demonstrate that such source was published prior to the priority date of the application.
Therefore, the Court held that a bald assertion of common general knowledge without setting out identifiable sources or the basis for such assertion is not only impermissible but also arbitrary and contrary to the principles of natural justice. Such an approach would effectively permit a Controller to decide an application on mere ipse dixit by relying upon undisclosed common general knowledge or personal knowledge without recording reasons. It would also prevent the applicant from understanding the reasoning behind the refusal and effectively challenging it in appeal.
Court’s Decision and Reasons for Remand
The Court also took the opportunity to address recurring deficiencies in Patent Office refusal orders. It observed that orders requiring interference frequently suffer from (i) lack of adequate reasoning, (ii) failure to analyse rival submissions, (iii) absence of discussion of the cited prior art and statutory provisions, (iv) lack of objective findings supported by material on record, and (v) absence of a discernible chain of reasoning connecting the facts with the conclusions reached.
The Court observed that remands required solely because of such deficiencies result in avoidable consumption of judicial time, duplication of effort within the Patent Office, and additional delay and expense for applicants. It emphasised that merely reproducing submissions, objections or statutory provisions followed by a conclusion on patentability would not constitute a reasoned and speaking order; the reasoning must disclose the basis on which the Controller arrived at the conclusion.
The Court accordingly allowed the petition and set aside the impugned order dated March 2, 2023. The Court remanded Patent Application No. 202021019409 for fresh consideration and directed that it be decided within 12 weeks from the date on which a copy of the judgment was communicated.
Parting Notes
This case once again pointed out that the pattern of unreasoned or inadequately reasoned orders passed by the patent office has unfortunately persisted despite repeated directions from various courts to address these very deficiencies. The Court also expressed concern over the recurring pattern of unreasoned or inadequately reasoned orders passed by the Patent Office despite repeated judicial directions addressing these deficiencies. It observed that “the infirmity lies not in the absence of departmental standards but in the recurring failure to apply them”. Consequently, Courts are frequently left with little option but to set aside and remand such orders for fresh consideration, even where the Controller’s ultimate conclusion may, upon proper analysis, prove sustainable.
The decision emphasizes two important principles for examination of inventive step. First, common general knowledge cannot be invoked merely as an assertion; its source and existence at the relevant date must be demonstrated on the record. Second, the inventive step analysis must consider the claimed invention as a whole rather than dismembering an integrated process into individual steps and rejecting it because one or more such steps may independently be routine. The ruling therefore emphasises the need for a transparent, evidence-based and reasoned inventive-step analysis capable of being meaningfully tested in appeal.
Author: DPS Parmar