Under India’s patent regime, once a patent application is published, it is routinely examined by the Patent Office for compliance with statutory requirements such as novelty and inventive step, culminating in a decision under Sections 14 and 15 of the Patents Act, 1970. Independently, a third party may file a pre-grant opposition under Section 25(1), which the Controller is required to adjudicate alongside the routine examination. Where both processes are triggered, a patent application is subjected to two parallel tracks of evaluation, wherein the grounds of objection to grant and prior art references may vary.

This structural feature of patent prosecution came under scrutiny before the Bombay High Court in Vishal Prafulsingh Solanke & Anr. vs Controller of Patents and Designs & Ors. [COMMPL/25369/2023, 2025:BHC-OS:4952], where the central question was whether a patent application could be refused solely on the strength of adverse findings in a pre-grant opposition, notwithstanding a favourable finding on novelty in routine examination under Sections 14 and 15.

In the instant case, the Controller refused patent application number 879/MUM/2015, entitled “Thread Type Tamper Evident Security Seal”, by upholding the objections raised in the pre-grant opposition under Sections 25(1)(b) (lack of novelty) and 25(1)(e) (lack of inventive step). In parallel, while conducting the routine examination under Sections 14 and 15, the Controller found that the claimed invention was novel but lacked inventive step, and accordingly refused the application.

Notably, the two assessments relied on different prior art sets. The pre-grant opposition was decided primarily on the basis of documents US5419599 and US6390519, whereas the routine examination considered documents WO2006000370A1 and US6390519B1. In both the assessments document US1911060A, which was referred to in the background of US5419599, was treated as forming part of the common general knowledge.

The Appellants challenged the refusal on multiple grounds. Their principal contention was that the Controller’s own finding of novelty during routine examination rendered the refusal under Section 25(1)(b) untenable. According to the Appellants, the impugned order was internally inconsistent and failed to reconcile the divergent conclusions reached in the two proceedings.

They further argued that the Controller had impermissibly relied on the same prior art documents to negate both novelty and inventive step, contrary to the principle articulated by the Calcutta High Court in Guangdong Oppo Mobile Telecommunications Corp. Ltd. vs Controller of Patents and Designs [AID No.20 of 2022]. The Appellants also contended that the Controller had failed to properly identify the closest prior art, inadequately substantiated the source of common general knowledge by replying on a document cited only in the background of a prior art reference cited by the Opponent, and disregarded their written submissions and technical diagrams.

In response, the Respondents maintained that due process had been followed. It was argued that the impugned order was structured in two independent parts: one addressing the technical merits of the pre-grant opposition under Section 25(1) and the other pertaining to the examination under Sections 14 and 15. Each part was based on a different set of prior art documents. They submitted that novelty having been upheld against one set of prior art did not preclude its rejection in view of a different prior art cited during the pre-grant opposition.

The Respondents argued that even if the Appellants’ objections to the findings under Sections 14 and 15 were accepted, the conclusions drawn under Section 25(1) would remain unaffected. Relying on the Delhi High Court’s decision in Opentv Inc. vs Controller of Patents [2023 SCC OnLine Del 2771], they contended that a single valid ground of refusal is sufficient to determine the fate of a patent application, rendering examination of other grounds unnecessary.

The Court accepted the Respondents’ submissions and held that the impugned order must be read as comprising two distinct and independent parts. It clarified that these two parts are to be evaluated independently and must be examined on their own merits.

On merits, the Court upheld the Controller’s finding that the claimed invention lacked novelty in view of US5419599, holding that the snap-fit locking mechanism disclosed therein was a mechanical equivalent of the threaded lock claimed in the application. The Court further endorsed the Controller’s reliance on US1911060A as part of the common general knowledge, noting that an anticipated prior art document may legitimately inform the general state of the art known to a person skilled in the art. On this basis, the Court upheld the refusal under Sections 25(1)(b) and 25(1)(e).

The Court rejected the Appellants’ reliance on Guangdong Oppo, clarifying that the novelty and inventive step objections in the present case did not stem from the same prior art in the manner proscribed by that decision. It also reaffirmed, relying on OpenTV, that once the refusal under a single valid ground is sustained, it is unnecessary to examine other grounds or remand the matter for reconsideration.

Turning to the Controller’s finding under Section 15, the Court rejected the Appellants’ challenge and held that an anticipated prior art document may indeed be relied upon as evidence of common general knowledge. It upheld the Controller’s conclusion that the claimed invention lacked inventive step.

The Court also found no procedural irregularity or violation of principles of natural justice, observing that the Assistant Controller had dealt with the matter in accordance with law and had given a reasoned order after considering the submissions in detail.

Accordingly, the Court dismissed the petition and upheld the refusal of the patent application.