Case Note & Summary
The Petitioner, Deepak Nitrite Limited, filed a petition under Section 117A of the Patents Act, 1970, challenging an order dated 2nd March 2023 passed by the Assistant Controller of Patents and Designs, Mumbai, refusing its patent application No. 202021019409 titled 'A Free-Flowing Food Grade Sodium Nitrite and Production Method Thereof' under Section 15 of the Patents Act. The refusal was on the ground that the subject matter of claims 1 to 8 did not meet the requirements of Section 2(1)(ja) (inventive step). The Petitioner argued that the Impugned Order was non-speaking and failed to consider the invention as a whole. Regarding product claims (1-3), the Respondent acknowledged a distinction in impurity profile from prior art but dismissed it as common general knowledge without citing any source or considering whether the specific profile was disclosed. Regarding process claims (4-8), the Respondent isolated a single step (filtration) as commonly performed, without assessing the integrated multi-step process as a unit. The Petitioner relied on decisions in Medipack Global Ventures Private Limited v. Assistant Controller of Patents and Designs, F. Hoffmann-La Roche Ltd. v. Cipla Ltd., Groz-Beckert KG v. Union of India, and AGFA NV v. The Assistant Controller of Patents and Designs. The Court found that the Impugned Order lacked reasoning and failed to properly assess inventive step. It allowed the petition, set aside the Impugned Order, and remanded the matter to the Respondent for fresh consideration in accordance with law.
Headnote
A) Patents Act - Inventive Step - Section 2(1)(ja) - Product Claims - The Respondent refused product claims on the ground that reduction in impurities is common general knowledge, but failed to cite any source for such knowledge or consider whether the specific impurity profile was disclosed in prior art. Held that the order was non-speaking and unsustainable (Paras 3, 6-7).
B) Patents Act - Inventive Step - Section 2(1)(ja) - Process Claims - The Respondent refused process claims by isolating a single step (filtration) as commonly performed, without assessing the integrated process as a whole. Held that the invention must be considered as a whole and the order was bereft of reasoned analysis (Paras 4, 6-7).
C) Patents Act - Appeal - Section 117A - The Petitioner filed a petition under Section 117A impugning the order dated 2nd March 2023 refusing Patent Application No. 202021019409. The Court allowed the petition and set aside the Impugned Order, remanding the matter for fresh consideration (Paras 1, 7).
Issue of Consideration
Whether the Impugned Order refusing the patent application on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970, is sustainable in law.
Final Decision
The Court allowed the petition, set aside the Impugned Order dated 2nd March 2023, and remanded the matter to the Respondent for fresh consideration in accordance with law.
Law Points
- Section 117A Patents Act 1970
- Section 15 Patents Act 1970
- Section 2(1)(ja) Patents Act 1970
- inventive step
- common general knowledge
- product claims
- process claims
- integrated process
- non-speaking order
Case Details
2026 LawText (BOM) (07) 39
Commercial Miscellaneous Petition No. 107 of 2025
Mr. Hiren Kamod, Mr. Priyank Gupta, Mr. Abhishek Shrivastava, Ms. Aditi Sharma, Mr. Rajspandan Nigam, Ms. Vithika Sharma, Mr. Deepak Pawar, Mr. Abhijeet Gidde, Ms. Sanika Gupte, Mr. Amey Kokare, Mr. harshit Bansal, Ms. Shravani Deshmukh for the Petitioner; Mr. Yashodeep Deshmukh, Mr. Ashutosh Mishra, Mr. Rutwik Rao Vaidehi Deshmukh for the Respondent.
The Assistant Controller General of Patents and Designs
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Nature of Litigation
Commercial Miscellaneous Petition under Section 117A of the Patents Act, 1970, challenging an order refusing a patent application.
Remedy Sought
The Petitioner sought to set aside the Impugned Order dated 2nd March 2023 refusing its patent application.
Filing Reason
The Petitioner's patent application No. 202021019409 was refused by the Respondent on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act.
Previous Decisions
The Assistant Controller of Patents and Designs passed the Impugned Order on 2nd March 2023 refusing the patent application.
Issues
Whether the Impugned Order refusing the patent application on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970, is sustainable in law.
Submissions/Arguments
The Petitioner argued that the Impugned Order was non-speaking and failed to consider the invention as a whole. For product claims, the Respondent acknowledged a distinction in impurity profile but dismissed it as common general knowledge without citing any source or considering whether the specific profile was disclosed. For process claims, the Respondent isolated a single step (filtration) as commonly performed, without assessing the integrated multi-step process as a unit.
Ratio Decidendi
The Impugned Order was non-speaking and failed to properly assess inventive step under Section 2(1)(ja) of the Patents Act. The Respondent did not cite any source for the asserted common general knowledge, did not consider whether the specific impurity profile was disclosed in prior art, and did not assess the integrated process as a whole. Therefore, the order was unsustainable and set aside.
Judgment Excerpts
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... refusing the Petitioner’s Patent Application No. 202021019409... 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.
Regarding the product claims... the Impugned Order does not (i) cite any reference, treatise, standard text, or other identifiable source from which the asserted 'common general knowledge' is said to be drawn; (ii) consider whether the specific impurity profile claimed in the Petitioner's application is disclosed or suggested in the cited prior art documents; or (iii) engage with the Petitioner’s submissions explaining that the controlled impurity profile is tailored to the achievement of a food grade, free-flowing sodium nitrite of the kind claimed.
Regarding the process claims... the Respondent had refused the process claims by isolating a single step, namely the filtration step, and holding such filtration to be commonly performed in the laboratory and, on that basis, failed to consider the invention as a whole.
Procedural History
The Petitioner filed patent application No. 202021019409. The Respondent passed the Impugned Order on 2nd March 2023 refusing the application. The Petitioner then filed the present Commercial Miscellaneous Petition No. 107 of 2025 under Section 117A of the Patents Act, 1970, challenging the Impugned Order.
Acts & Sections
- Patents Act, 1970: Section 117A, Section 15, Section 2(1)(ja)
