"Common General Knowledge" Is Not Enough: Bombay High Court Sets Aside Patent Refusal

In a significant judgment, the Hon'ble Bombay High Court has set aside an order refusing Deepak Nitrite Limited's patent application, reiterating that patent refusals under Section 15 of the Patents Act must be supported by cogent reasoning, proper inventive step analysis, and identifiable evidence, particularly where the Controller relies on "common general knowledge."

Background

The petition concerned Patent Application No. 202021019409 titled "A Free-Flowing Food Grade Sodium Nitrite and Production Method Thereof." The application was refused by the Indian Patent Office on the ground that Claims 1-8 lacked an inventive step under Section 2(1)(ja) of the Patents Act. The Applicant challenged the refusal before the Hon’ble Bombay High Court.

Issues Before the Court

The challenge was directed against two aspects of the refusal order:

• Product Claims (Claims 1-3): The Controller acknowledged that the claimed product differed from the prior art in its impurity profile but nevertheless held that reduction in impurities could not constitute an inventive step by relying upon "common general knowledge," without identifying any supporting source or analysing whether the claimed impurity profile was taught or suggested by the cited prior art.

• Process Claims (Claims 4-8): The applicant argued that the invention lay in the integrated sequence of manufacturing steps. However, the Controller isolated a single filtration step and concluded that it was routine, without assessing the inventive contribution of the process as a whole.

  
  

Observations of the Court

The Hon'ble Court held that the IPO cannot reject a patent application merely by invoking "common general knowledge" without identifying the source of such knowledge and demonstrating that it formed part of the common general knowledge before the priority date. A bald assertion unsupported by evidence is arbitrary and contrary to principles of natural justice.

The Hon’ble Court further observed that inventive step analysis requires the invention to be considered as a whole and not by dissecting individual claim elements in isolation. It reiterated that the Controller must undertake an independent analysis, identify the inventive concept, determine the common general knowledge of the person skilled in the art, compare the invention with the prior art, and provide reasoned findings.

Importantly, the Hon’ble Court expressed concern over the increasing number of non-speaking and mechanically reasoned patent refusal orders being passed by the Patent Office. Referring to several recent decisions, it noted recurring deficiencies including failure to consider applicants' submissions, inadequate inventive step analysis, unsupported reliance on common general knowledge, hindsight reasoning, and mechanical reproduction of examination objections without independent application of mind. Accordingly, the learned single Judge set aside the refusal order and remanded the application to the IPO.

Key Takeaways

This judgment is another important addition to the growing body of Indian patent jurisprudence requiring well-reasoned, evidence-based patent examination. It reinforces that:

• "Common general knowledge" cannot be invoked without identifying its source;

• Inventive step must be assessed by considering the invention as a whole rather than isolated claim features;

• Patent refusal orders must demonstrate independent application of mind and contain a clear chain of reasoning capable of meaningful judicial review.

  
  

The decision serves as a significant reminder that reasoned decision-making is indispensable to ensuring fairness and certainty in India's patent prosecution system.

Nanki Arneja

Partner | Attorney at Law

nanki@iprattorneys.com