A recent Bombay High Court decision adds an important procedural dimension to the growing judicial scrutiny of how Controllers assess obviousness. Maneesha Gupta explains how in Ashit Padhaya v. Assistant Controller of Patents and Designs, the problem was not the absence of evidence for common general knowledge, but the Controller’s reliance on evidence that was never disclosed to the Opposition Board or the patentee before revoking the patent. Maneesha is a fifth-year B.A. LL.B. (Hons.) student at NMIMS School of Law, Bengaluru.
Adventures of Controller: Citing CGK suo motu in Post-Grant Opposition
By Maneesha Gupta
A previous post on the blog highlighted how the DHC in Dong Yang and the MHC in Srinivas Jegannathan converged on one thing: Obviousness cannot be presumed by the Controller. Whether it is a Controller asserting Common General Knowledge (DHC) or relying on cited Prior Art references (MHC). The conclusion must be backed by concrete evidence and documented sources from which we can trace through the minds of PSITA. However, a recent case of Ashit Padhaya vs. Assistant Controller of Patents and Designs, Mumbai & Ors. (2026) adds another layer to this.
The Controller, in a post-grant opposition, relied on concrete evidence (YouTube videos) rather than assuming the Common General Knowledge (CGK). However, the Controller erred by failing to disclose these videos to the Opposition Board and the applicant before citing them in the final order. This resulted in the BHC setting aside the revocation order, finding that the non-disclosure was a breach of natural justice. The Court then directed that all of these YouTube citations be remitted and formally placed before the Opposition Board so the parties could examine and contest them through standard post-grant opposition procedures.
To understand the impact of these decisions, I have three issues to unpack-
Do YouTube Videos Qualify as CGK?
Let’s first understand what CGK is. Having its origin in the UK, especially in the case of General Tire & Rubber Co. (1972), and entering Indian Jurisprudence through Bishwana Prasad v Hindustan Metal Industries (1978) in the Supreme Court, CGK means anything in the mind of PSITA as standard background knowledge. It could be in textbooks, dictionaries, etc. Basic coding languages or any process mentioned in books, for example, if someone is inventing a smart lock. All of these will be CGK. So knowledge is so basic that it is taken for granted. So whether YouTube videos qualify as CGK depends on their capability of directly representing a universally accepted industry standard.
Did the Controller use CGK to Evaluate the Right Legal Hurdle?
It is often a misconception that if an invention uses CGK, it won’t pass the threshold of novelty. However, novelty is assessed strictly against Prior Art. Unlike CGK, Prior Art includes everything publicly available that is relevant to the PSITA, even if they haven’t read it or known about it. So let’s say a Research Paper written in Japanese, presented at a conference, will also be prior art.
It is to evaluate inventive step or obviousness that Prior Art and CGK are assessed together. As established in Bishwanath Prasad (1978), prior art would be taken and given to the legal fiction of the PSITA, who has CGK. And the question would be: Would combining Prior Art with PSITA’s CGK render the invention obvious or not? In this present case, obviousness was rightly assessed against Prior Art and CGK together.
The Supreme Court in Bishwanath Prasad (1978) made it clear that even though novelty and inventive step are closely allied, they remain distinct legal standards. Piecing together separate features across different prior art documents to argue that an invention is unpatentable is an analysis of obviousness and not the analysis of novelty. Why? What I understand is that novelty is a strict test of absolute newness, and a single prior document must disclose every single element of the claimed invention to pass this hurdle. Patching details of several prior art documents together won’t work in this analysis. Inventive step analysis wants to make sure that obvious tweaks or combinations of what already exists are not patented. Here, combining multiple prior art documents or a single prior art document with CGK works well.
Can a Controller cite CGK Suo Motu in a Post-Grant Opposition?
The answer to this is a conditional yes, which comes with a strict statutory catch. Section 25 of the Patents Act mentions how post-grant oppositions are to be dealt with. Specifically, Section 25(2)(f) empowers the Controller to evaluate obviousness against background CGK even if the Opponent failed to plead that specific piece of general knowledge explicitly. The Controller is empowered to have certain powers of a civil court under Section 77(1). Powers include digging up document sources, like those YouTube videos, to substantiate CGK. However, if the Controller finds a YouTube video suo motu during their own research and relies upon it in the final order without putting it on the record or disclosing it to the patentee before deciding, it turns into secret evidence that is prohibited under Section 80. And in fact, relying on any undisclosed evidence, be it CGK or anything else, in any matter is a violation of natural justice, depriving the other party of their right to audi alteram partem.
This case reminds us that the Controller is empowered to discourage bad patents based on CGK findings by citing CGK suo motu in a post-grant opposition, but that must be done by putting all records on the table for all parties- the Opposition Board and the Applicant- providing them a fair opportunity to rebut before issuing a final order.
