This case involves a legal challenge to a patent refusal by the Assistant Controller of Patent and Designs under the Patents Act, 1970, adjudicated by the Bombay High Court in its Commercial Division. The petitioners, Vishal Prafulsingh Solanke and another, sought to quash an order dated 14th June 2023 that rejected their patent application (No. 879/MUM/2015) for an invention titled "Thread Type Tamper Evident Security Seal." The refusal was based on pre-grant opposition under Section 25(1)(b) (lack of novelty) and Section 25(1)(e) (lack of inventive step) of the Act. The judgment, delivered on 27th March 2025, explores critical issues of patent law, including the standards for novelty, inventive step, and the role of prior art and common general knowledge in patent adjudication.

Detailed Factual Background:
The petitioners filed a patent application on 17th March 2015 for a tamper-evident security seal designed to prevent tampering in applications such as electricity boards and rickshaw meters. The invention featured a thread-type seal made of polycarbonate material with an embedded wire for enhanced tamper evidence. The application was published in the Patents Journal, triggering a pre-grant opposition by Respondent No. 3 on 16th January 2018. The Assistant Controller of Patent and Designs issued a First Examination Report (FER) on 30th April 2020, to which the petitioners responded on 24th December 2020, addressing both the FER and the opposition.

The invention was intended to address practical issues in prior art seals, such as wastage due to inadvertent rotation and ease of tampering. Unlike prior seals, the petitioners’ design allowed correction of accidental rotations and reuse after a 180-degree rotation, enhancing user-friendliness and cost efficiency. However, the Assistant Controller, after a hearing on 2nd May 2023 and subsequent written submissions, refused the application on 14th June 2023, citing lack of novelty and inventive step based on prior art documents, including US5419599 and US6390519.

Detailed Procedural Background:
The petitioners filed Patent Application No. 879/MUM/2015 on 17th March 2015. The application was published in the Patents Journal. Respondent No. 3 filed a pre-grant opposition on 16th January 2018 under Section 25(1) of the Patents Act. The Assistant Controller issued a First Examination Report (FER) on 30th April 2020. The petitioners’ agent filed replies on 24th December 2020 to both the FER and the opposition. A pre-grant opposition hearing occurred on 2nd May 2023, where amendments were suggested.

The petitioners submitted amended specifications post-hearing. On 9th May 2023, the Assistant Controller issued an interim order directing written submissions. The petitioners filed their submissions on 16th May 2023, and Respondent No. 3 filed theirs on 31st May 2023. On 14th June 2023, the Assistant Controller refused the patent under Sections 25(1)(b) and 25(1)(e). The petitioners filed a Commercial Miscellaneous Petition (L) No. 25369 of 2023 on 11th September 2023 under Section 117A of the Patents Act before the Bombay High Court. The judgment was reserved on 28th November 2024 and pronounced on 27th March 2025.

Issues Involved in the Case:
whether the petitioners’ invention lacked novelty under Section 25(1)(b) in light of prior art US5419599? whether it lacked an inventive step under Section 25(1)(e) when compared to prior art and common general knowledge? whether the Assistant Controller’s findings on novelty and inventive step were legally inconsistent or unsupported by prior art analysis? whether the impugned order adequately addressed the petitioners’ submissions and adhered to principles of natural justice? and whether the refusal order provided sufficient reasoning, particularly regarding technical advancement and economic effect?

Petitioners’ Submissions:
The petitioners argued that their invention prevents tampering in critical applications, featuring a unique thread-type seal with a wire moulded inside, distinguishing it from prior art (D1: WO2006000370A1 and D2: US6390519B1). They contended that the impugned order misapplied Sections 25(1)(b) and 25(1)(e), ignoring differences highlighted in diagrams and submissions. Citing Guangdong Oppo Mobile Telecommunications Corp. Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022, Calcutta High Court, 13th June 2023), they asserted that novelty requires prior art to disclose the entire invention, noting that the order itself acknowledged a novel feature (threads in cavity and insert) yet contradicted this by refusing the patent. On inventive step, they relied on Avery Dennison Corporation v. Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 29/2021, Delhi High Court, 4th November 2022), arguing that the invention showed technical advancement (e.g., reusability) not obvious to a skilled person. They challenged the order’s lack of detailed analysis on obviousness or common general knowledge sources, referencing Afga NV v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 477/2022, Delhi High Court). They sought to quash the impugned order and requested a reasoned reconsideration within 12 weeks.

Respondents’ Submissions:
Respondent Nos. 1 and 2, defended the refusal, asserting that a fair hearing was conducted with no procedural lapses. He argued that US5419599 anticipates all features of the invention, with its snap-fit mechanism equivalent to the threaded lock (paragraphs 18-19 of the impugned order). He contended that no surprising effect or economic advantage was demonstrated, citing Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511, Supreme Court), which requires more than workshop improvements for patentability. He justified the use of US1911060A (background of US5419599) as common general knowledge, upheld in Agfa NV (supra). He emphasized that the pre-grant opposition (US5419599) and Sections 14-15 analysis (D1, D2) were distinct, and a single valid ground suffices for refusal, per Opentv Inc. v. Controller of Patents and Designs (2023 SCC OnLine Del 2771, Delhi High Court). He concluded that the impugned order was reasoned and warranted no interference.

Detailed Discussion on Judgments Cited by Parties:

• Guangdong Oppo Mobile Telecommunications Corp. Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022, Calcutta High Court, 13th June 2023) was cited by the petitioners to argue that novelty and inventive step objections cannot stem from the same prior art. The court rejected this, finding that different prior arts (US5419599 for pre-grant, D1/D2 for Sections 14-15) were used, rendering the citation misplaced.
• Avery Dennison Corporation v. Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 29/2021, Delhi High Court, 4th November 2022) was relied upon by the petitioners to claim that technical advancement (reusability) satisfied the inventive step. The court found no such advancement, as the threaded lock was equivalent to US5419599’s features, negating the petitioners’ reliance.
• Afga NV v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 477/2022, Delhi High Court) was invoked by the petitioners to challenge the lack of detailed obviousness analysis, while the respondents justified citing prior art as common knowledge. The court upheld the use of US1911060A as common knowledge, finding no prohibition in citing prior art literature.
• Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511, Supreme Court) was cited by the respondents to argue that the invention was a mere workshop improvement. The court applied this to hold that the threaded lock lacked inventive step beyond known art.
• Opentv Inc. v. Controller of Patents and Designs (2023 SCC OnLine Del 2771, Delhi High Court) was referenced by the respondents to assert that a single valid ground suffices for refusal. The court agreed, upholding the refusal under Section 25(1)(b) alone.
• Mahesh Gupta v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 328 of 2022, Delhi High Court) supported the respondents’ inventive step analysis with common knowledge. It reinforced the court’s acceptance of US1911060A as a valid source.

Detailed Reasoning and Analysis of Judge:

The Court bifurcated the impugned order into two parts: paragraphs 12-23 (pre-grant opposition) and 24-31 (Sections 14-15), treating them as independent. On novelty under Section 25(1)(b), he found that US5419599 anticipated all features, with its snap-fit mechanism mechanically equivalent to the threaded lock. US1911060A’s disclosure further supported this as common knowledge, justifying refusal. For inventive step under Section 25(1)(e), even if novelty were contested, the threaded lock showed no technical advancement or economic effect, being obvious to a skilled person per US5419599 and US1911060A. The petitioners’ reliance on a novelty finding in Sections 14-15 (against D1/D2) did not override the pre-grant refusal (against US5419599), as the analyses were distinct. Legal precedents like Biswanath Prasad confirmed the need for more than workshop improvements, while Opentv Inc. validated that one ground suffices for refusal. The judge found no violation of natural justice, with the order addressing all contentions and substantiated by reasons. He concluded that the petitioners failed to demonstrate error in the refusal, warranting dismissal.

Final Decision:

The Commercial Miscellaneous Petition was dismissed on 27th March 2025, with no order as to costs, upholding the Assistant Controller’s refusal of Patent Application No. 879/MUM/2015.

Law Settled in This Case:

• The case clarified that a patent refusal can stand on a single valid ground (e.g., lack of novelty), irrespective of other findings.
• It affirmed that disclosures in prior art backgrounds (e.g., US1911060A in US5419599) can constitute common general knowledge for inventive step analysis.
• It also established that features with identical functionality (e.g., snap-fit vs. threaded lock) may negate novelty if fully anticipated by prior art.

Case Title: Vishal Prafulsingh Solanke Vs The Controller of Patent and Designs 
Date of Order: 27th March 2025
Case No.: Commercial Miscellaneous Petition (L) No. 25369 of 2023
Neutral Citation: 2025:BHC-OS:4952
Name of Court: High Court Bombay
Name of Judge: Hon'ble Justice Shri R.I. Chagla J.

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539