Deepak Nitrite Limited v Assistant Controller General of Patents and Designs (2026)

Summary

“The present Petition has been filed under the provisions of Section 117A of the Patents Act, 1970 ... and impugns an order dated 2nd March 2023 ... passed by the Respondent, i.e., the Assistant Controller of Patents & Designs, Patent Office, Mumbai, refusing the Petitioner’s Patent Application No. 202021019409, titled ‘A Free-Flowing Food Grade Sodium Nitrite and Production Method Thereof’ under Section 15 of the Patents Act, on the ground that the subject matter of claim nos. 1 to 8, as amended and filed, do not meet the requirements of Section 2(1)(ja) of the Patents Act.” (para 1) Counsel for the Petitioner pointed out that the product claims were refused “on the single footing that ‘reduction in impurities’ cannot constitute an inventive step for the reason that it is ‘common general knowledge’ that no compound is ever 100% pure” (para 3), and that the process claims were refused “by isolating a single step, namely the filtration step” (para 4). Counsel for the Respondent “fairly conceded that the matter can be remanded for fresh consideration” as to the process claims (para 8) but, asked “as to what, according to him, would constitute ‘common general knowledge’ and where from the record the same could be discerned, Mr Deshmukh was unable to do so” (para 9).

The Court held that “it is wholly impermissible for the Respondent, in 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 common general knowledge on the day of patent application” (para 10), and that “the present Petition would have to be allowed, the Impugned Order would have to be set aside, and the matter remanded back for consideration afresh” (para 12). It ordered: “The Petition is disposed of in terms of prayer clause (a), and the Impugned Order dated 2nd March 2023 is set aside.” “The Controller to decide the Patent Application No. 202021019409 after ensuring compliance with what is set out in paragraph 15 and 16 above.” “The Application to be decided within a period of twelve weeks from the date on which a copy of this Order is communicated to the Controller.” (para 17)

What the court decided

1. Common general knowledge as a ground. “In my view, it is wholly impermissible for the Respondent, in 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 common general knowledge on the day of patent application.” The Court recorded that in AGFA NV v. Assistant Controller of Patents and Designs “the Delhi High Court, inter alia, held that the Controller is required to identify the source of the asserted common general knowledge and to demonstrate that such source was published prior to the priority date of the application.” (para 10)
2. A bare assertion. “In light of the above, in my unhesitating view, 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. To allow this would, in my view, effectively amount to permitting a Controller to pass an order on his mere ipse dixit by relying upon undisclosed ‘common general knowledge’ or personal knowledge without recording any reasons. Needless to state, such an approach would also deprive a party against whom an Order is passed from having the benefits of the reasoning on which the order was passed and therefore affect the ability of such a party to effectively challenge the same.” (para 11)
3. Reasoned and speaking orders. “The Courts have consistently held that the Controller is under a mandatory obligation to pass a well-reasoned and speaking order which demonstrates independent application of mind and consider the objections raised and the responses thereto and the prior art relied upon. The mere reproduction of the FER, hearing notice, opposition pleadings, prior art documents cited, or positive findings that an invention lacks novelty, inventive step, or patentability would not qualify as a reasoned and speaking order. The reasoning must disclose the basis on which the Controller has arrived at the conclusions recorded in the order.” (para 16)
4. What an order must contain. “I must also note that the infirmity lies not in the absence of departmental standards but in the recurring failure to apply them.” Such orders “nevertheless require interference because they are lacking in (i) adequate reasoning, (ii) analysis of the rival submissions, (iii) discussion of the cited prior art and statutory provisions, (iv) objective findings supported by material on record, and (v) a discernible chain of reasoning connecting the facts to the conclusions ultimately reached.” (para 15)
5. Obiter. Recurring infirmities. “Unfortunately, nothing seems to have changed, and the frequency with which such orders are passed is only increasing.” The Court listed decisions that “set aside orders of the Patent Office and remanded matters for fresh consideration on account of similar and recurring infirmities, such as (i) recurring deficiencies in patent examination, including denial of a fair opportunity to meet objections; (ii) failure to consider the applicant’s submissions and evidence; (iii) absence of reasoned findings on statutory objections; (iv) inadequate claim construction and inventive-step analysis; (v) reliance on hindsight or unsupported assertions of common general knowledge; (vi) improper combination of prior art; (vii) mechanical reproduction of material without independent reasoning; and (viii) non-speaking orders that frustrate effective appellate review.” (para 14) “Remands necessitated solely on account of such orders result in avoidable consumption of judicial time, duplication of effort within the Patent Office, and additional delay and expense for applicants.” (paras 14–15)
6. Procedure. A different Controller on remand. Counsel for the Respondent “informs me that the office of the Controller of Patents has now put in place a system whereunder, upon remand, the application would be assigned to a different Controller, other than the one who passed the Impugned Order. The statement is accepted. In view of the statement made by the Learned Counsel for the Respondent, a specific direction to place the matter before the new Controller is not required.” (para 13)
7. Procedure. Directions. “The Petition is disposed of in terms of prayer clause (a), and the Impugned Order dated 2nd March 2023 is set aside.” “The Controller to decide the Patent Application No. 202021019409 after ensuring compliance with what is set out in paragraph 15 and 16 above.” “The Application to be decided within a period of twelve weeks from the date on which a copy of this Order is communicated to the Controller.” (para 17)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 September 2026.