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Calcutta High Court
R J Reynolds Tobacco Company (Sr … vs The Controller General Of Patents … on 16 April, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIPD-8
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
(Intellectual Property Rights Division)
IPDPTA/31/2023
R J REYNOLDS TOBACCO COMPANY (SR 6/2020/PT/KOL)
VS
THE CONTROLLER GENERAL OF PATENTS DESIGNS AND TRADEMARKS AND
ANR
Before:
The Hon'ble Justice RAVI KRISHAN KAPUR
Date: 16th April 2025
Appearance:
Mr. Sayantan Basu, Sr. Adv.
Mr. Tanmoy Roy, Adv.
Mr. Soumen Mukherjee, Adv.
Mr. A. Mukherjee, Adv.
Ms. A. Roy, Adv.
...for appellant.
Mr. Indrajeet Dasgupta, Adv.
Ms. Rini Bhattacharyya, Adv.
...for respondent/ controller.
The Court: The grievance of the appellant is directed against an order
dated 19th September, 2019, whereby the subject application for patent has
been refused on the ground of section 3(b) of the Patents Act, 1970.
Briefly, the basic priority application was filed in the USA for
substantially the same invention after protracted prosecution including
hearings and recording of evidence, Indian application no. 1940/KOLNP/2013
has been refused on the sole ground of section 3(b) of the Act.
The premise on which the impugned order has been passed is that all
forms of tobacco are injurious to human health. The subject invention was “a
method of preparing a sugar containing syrup from the stalk of a plant of the
Nicotiana species”. The invention contemplates a product i.e. tobacco
flavorant patent which has been rejected.
It is contended on behalf of the petitioner that the impugned order is
bereft of any reasoning. The rejection has been premised on the basis that
tobacco is injurious to health. The objection under section 3(b) being that
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since it was a tobacco related invention the same was barred under section
3(b) of the Act. It is also contended that the impugned order is of 18 pages out
of which 17 pages are verbatim reproduction of the Notes Submission filed by
the appellant. There are no reasons whatsoever in passing the impugned
order. There is also no consideration of any scientific data or experimental
information in arriving at such conclusion.
The impugned order has been arbitrarily passed on a pre-conceived
notion. In passing the impugned order, the Assistant Controller has ignored
all the evidence which had been relied on by the appellant including the
international patent information pertaining to the subject invention. It is
further contended on behalf of the appellant that in respect of similar
products which have been attempted to be patented diverse applications by
other competitors have been allowed.
By an order dated 19th March 2025, an opportunity had been sought for
on behalf of the respondent Controller to take instructions in the matter. It is
submitted on behalf of the respondents that despite attempts, the respondent
authorities have not furnished any information whatsoever nor have they
responded to the queries raised by their Advocates.
Section 3(b) of the Patents Act 1970 provides as follows:
“[(b) an invention the primary or intended use or commercial exploitation of
which could be contrary public order or morality or which causes serious
prejudice to human, animal or plant life or health or to the environment;]”
A perusal of the impugned order demonstrates that there are no
reasons in rejecting the subject application. The order proceeds on a
preconceived notion that tobacco products are seriously harmful to human
health. There is no other reason at all. The respondent Controller has not
even dealt with either any of the evidence produced by the petitioner before
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the authorities or even discussed the subject invention. Despite the appellant
having furnished a list of patents granted by the Indian Patent Office in
respect of similar products, the respondent has neither dealt nor considered
the same. The fact that the subject invention causes serious prejudice to
human health is a conclusion without any evidence at all.
It has been a longstanding principle of patent law that patents should
not be granted for immoral inventions. On a plain reading, section 3(b)
focuses on the primary or intended use or commercial exploitation of an
invention. The underlying interest being ethical considerations. In similar
context, Article 53(a) of the EPC 2000 provides that European patents ‘shall
not be granted in respect of inventions, the commercial exploitation of which
would be “contrary to public order or morality”.
In the 161st Report of the Parliamentary Standing Committee on
Commerce, in section 12.1(i), it has been observed that;
“It was informed that section 3(b) of the Patents Act, 1970 prohibits
patenting of technology, use or application at the sole discretion of the
Controller if found by him to be ‘contrary to public order or morality or which
causes serious prejudice to human, animal or plant life or health or to the
environment’. Hence, the widely worded provision of Section 3 (b) is without
any sufficient guidance or safeguards against arbitrary exercise of power
by the Controller. It, therefore, may lead to refusal of socially useful
inventions under patent protection. For example, nicotine chewing gums,
which are used for deaddiction to smoking, are denied patent on the ground
of section 3(b). Furthermore, smoking devices which make smoking less
hazardous are denied patents in India.
It was suggested that that the provision should be amended wherein
patents are not granted to inventions that are considered as against the law
being in force. The Committee recommends the Department that the Section
3(b) of Indian Patent Act, 1970 should be amended so that a provision of a
safeguard mechanism is included against the arbitrary exercise of power by
the Controller in declining patents. A check and balance mechanism should
be inserted under the Act which would ensure granting of patents to socially
useful inventions or innovations. It, however, recommends that the provision
be amended to limit the exclusion to only those inventions which are barred
under any law for the time being in force.”
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The finding of the Controller that in his opinion, “it is obvious that
tobacco products cause serious prejudice to human health” is
unsubstantiated and bereft of any reasons. [Kabushiki Kaisha Toshiba vs.
Asstt. Controller of Patents and Designs C.A. (Comm.IPD-PAT) 210/2022,
Agriboard International LLC vs. Deputy Controller of Patents and Designs C.A.
(Comm.IPD-PAT) 4/2022 and Alfred Von Schukmann vs. the Controller General
of Patents, Designs and Trademarks and Ors.].
The finding that the process claimed by the present invention is
seriously prejudicial to the human health is also unreasoned. There has been
no independent application of mind insofar as the evidence or materials relied
on by the appellant. The subjectivity of the Assistant Controller is written
large in the impugned order without any reasoning or consideration of the
scientific evidence or data relied on by the appellant.
In view of the above, the impugned order is unsustainable and is set
aside. The matter is remanded to the Controller to have the subject
application decided afresh within a period of four months from the date of
communication of this order. It is made clear that there has been no
adjudication on the merits of the case and all questions are left open to be
decided in accordance with law.
(RAVI KRISHAN KAPUR, J.)
SK.
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