Source of the ‘common knowledge’ essential to conclude Patent lacking Inventive step
To establish whether something is common general knowledge, the first and most important step is to look at the sources from which the skilled addressee could acquire the information.
The Delhi High Court in an Appeal against the Order of Controller of Patents in Agfa NV & anr vs The Assistant controller of patents and designs & anr [C.A.(COMM.IPD-PAT) 477/2022] discusses what constitutes ‘Common General Knowledge’ and lays down important principles and explanations for raising such objections. The Controller refused the patent application because of the claims lacking inventive steps, clarity, and succinctness of the Claim. The application relates to ‘Manufacturing of decorative laminates by Inkjet’ (no. 201617023479).
Lack of Inventiveness
Regarding the objection on the lack of Inventiveness, the impugned order records that steps 1 to 4 have been disclosed in the prior art cited as D5. However, it does not make any mention of step 5. The order admits that prior art document D5 does not teach feature 5a, but the Controller relied upon ‘common general knowledge’ to refuse the Claim. However, the Controller did not provide any reference or basis to establish ‘common general knowledge’ or the fact as to why the persons skilled in the art would apply such ‘common general knowledge’ to the feature mentioned above. This reasoning was challenged by the Appellant (Agfa NV) on the ground that the order does not provide any reference to the ‘common general knowledge’ or the fact as to why the persons skilled in the art would apply such ‘common general knowledge’ to the feature in Step 5.
While examining the issue, the court laid important guidelines for the Controller to rely on ‘common general knowledge’ as a ground for refusing a patent application.
- The court held it is essential to specify the source of the said knowledge. It would be essential that the source of the ‘common general knowledge’ should have been published before the priority date of the patent application. In addition, the fact that a theory or principle or knowledge has become common knowledge needs to be substantiated by some evidence. The said evidence could be in the form of references to the ‘common general knowledge’ textbooks, research articles, or standard documents.
- The court noted that the Controller has failed to provide any source of the common knowledge considered in arriving at a decision. Therefore, it cannot be construed as to what precise element of ‘common general knowledge’ has been considered along with the cited prior art to claim that the combination of the teachings of the prior art and the ‘common general knowledge’ led to a finding of lack of inventive step.
- The court, while dealing with the objection raised by the Controller that the Claim lacks succinctness, noted that the first Claim is lengthy but by no means unnecessarily lengthy as it defines the specific features and expressions interlinked to each other. Considering that it is the patentee’s right to draft Claims to protect all the aspects and features of the invention sought to be protected, the court opined that the current set of Claims could not be said to lack succinctness.
- While deciding this matter, the court also noted an imminent need to update the Manual of Patent Office Practice and Procedure so that Examiners and Controllers can get better guidance on dealing with intricate matters like objections of lack of clarity and succinctness. This would be particularly useful when dealing with complex patents involving Artificial Intelligence systems, machine learning functions, agrochemicals, pharmaceuticals, and manufacturing methods.
Our comment: Various refusal orders of the Patent Office would show a Patent being refused on Claim(s) based on ‘common general knowledge’ and therefore lacks inventive step. The current order would guide the controller/s at Indian Patent Office to include the source of the “common general knowledge.”