Court criticizes "common general knowledge" assertion in patent rejection, mandates reasoned analysis for inventive step assessment.
In a significant ruling, the Bombay High Court has set aside an order by the Assistant Controller General of Patents and Designs that denied Deepak Nitrite Limited's patent application for "A Free-Flowing Food Grade Sodium Nitrite and Production Method Thereof." The judgment, delivered by Justice Arif Doctor, criticized the reliance on "common general knowledge" without substantiating sources or identifiable basis for rejecting the patent claims.
Deepak Nitrite Limited had challenged the rejection of its patent application, arguing that the Assistant Controller failed to provide a reasoned analysis and independent application of mind, necessary under Sections 15 and 117A of the Patents Act, 1970. The court highlighted the importance of considering the invention as a whole and not merely isolating individual components or steps. The judgment emphasized that the Controller must demonstrate adequate reasoning and analysis of rival submissions, cited prior art, and inventive-step analysis.
The petitioner's counsel, Mr. Hiren Kamod, pointed out that the product claims were rejected on the basis of "common general knowledge" regarding impurity profiles, without any identifiable source or standard reference. He argued that the specific impurity profile claimed was tailored to achieve a food-grade, free-flowing sodium nitrite, which distinguished it from prior art. Regarding process claims, the court noted that the inventive contribution lay in the synergistic combination and specific sequencing of steps in the production method, which should have been assessed as a unit.
The court's decision mandates a fresh examination of Deepak Nitrite's patent application, with instructions for the Controller to pass a well-reasoned and speaking order, demonstrating independent application of mind. The court has ordered that the application be assigned to a different Controller to ensure impartiality and compliance with proper procedural standards.
Bottom line:-
Patent Law - Assessment of inventive step must be supported by reasoned analysis, considering the invention as a whole and substantiating the basis of "common general knowledge."
Statutory provision(s): Sections 15, 117A of the Patents Act, 1970
