Category: Patents Act 1970

  • Calcutta HC: Patent Applications Cannot Be Rejected on Public Health Grounds Without Scientific Evidence

    Calcutta HC: Patent Applications Cannot Be Rejected on Public Health Grounds Without Scientific Evidence

    Date: 24.10.2026

    The Calcutta High Court has set aside the Patent Controller’s rejection of ITC Limited’s application for a β€œHeater Assembly to Generate Aerosol,” holding that the decision under Section 3(b) of the Patents Act lacked adequate reasons, misconstrued the invention, and breached principles of natural justice.

    Background of the dispute

    ITC’s patent application concerns a heater assembly designed for handheld aerosol-generating devices. Its stated technical purpose is to provide uniform heat distribution across an aerosol-forming substrate. The substrate may be solid or liquid and may, but need not, contain tobacco compounds.

    On 21 August 2024, the Controller of Patents rejected the application under Section 3(b) of the Patents Act, 1970. That provision excludes inventions whose primary or intended use, or commercial exploitation, would be contrary to public order or morality or seriously prejudice human, animal or plant life, health, or the environment.

    The Controller treated the invention as one exclusively connected with tobacco-containing substrates and concluded that it was harmful to human life and health. ITC appealed this decision before the Intellectual Property Rights Division of the Calcutta High Court.

    What the High Court decided

    In its judgment dated 20 May 2025, Justice Ravi Krishan Kapur set aside the rejection order and remanded the application to the Controller for a fresh decision. The Controller must reconsider the matter in accordance with law, after giving the parties a hearing, within three months of communication of the Court’s order.

    The Court did not grant the patent or decide the application’s merits. Instead, it found that the earlier decision-making process and reasoning were legally deficient.

    Key findings

    1. Section 3(b) requires an assessment of the invention’s actual primary or intended use

    The Court emphasized that Section 3(b) focuses on the primary or intended use or commercial exploitation of the specific invention. The inquiry cannot rest on an assumption that every possible use of a product associated with tobacco necessarily makes the invention unpatentable.

    The heater assembly was not limited to tobacco substrates. By treating the invention as necessarily and exclusively tobacco-based, the Controller fundamentally misunderstood its scope.

    2. A patent does not give permission to commercialize an invention

    A central point in the ruling is the distinction between a patent right and regulatory permission. A patent is an exclusionary or negative right: it enables the patentee to prevent others from making, using, selling, or exploiting the claimed invention without consent. It does not itself authorize the patent holder to manufacture, sell, market, or use the invention.

    The Court held that the Controller’s reasoning wrongly assumed that granting a patent would automatically permit commercialization of the product. Whether a product may lawfully be made, marketed, or sold is governed by other applicable laws and regulations, not by the patent grant alone.

    3. Health and morality objections need cogent reasoning and evidence

    The Court found that the conclusion that the invention caused serious prejudice to human life and health was unsupported by reasons or justification. Tobacco-related products are not, by themselves, categorically unpatentable in India.

    A refusal under Section 3(b) must show a clear connection between the invention’s actual intended use and the alleged harm, supported by cogent reasoning. The Court rejected a subjective or preconceived view that all tobacco-related products necessarily fall within the statutory exclusion, particularly where there is no independent scientific or technical evidence supporting the conclusion.

    4. β€œPublic order” and β€œmorality” cannot be applied as vague objections

    The Court held that the Controller’s finding that the invention was contrary to public order and morality was cryptic and unreasoned. It noted that Section 3(b) should not become a vehicle for refusing patents based solely on broad, subjective concerns about morality, public order, or health.

    In interpreting the provision, the Court referred to international patent-law concepts, including the notion of ordre public in TRIPS and the European Patent Convention. These materials indicate that the exclusion is directed at inventions likely to induce riot, public disorder, criminal conduct, or generally offensive behaviour, rather than at every invention that may raise a policy concern.

    5. New materials could not be relied on without giving ITC an opportunity to respond

    The Controller relied on three additional documents in the rejection order even though those documents had not been disclosed in the First Examination Report or hearing notices. ITC was therefore denied the opportunity to address them.

    The Court treated this as a serious procedural defect and a violation of natural justice. A patent applicant must have a fair opportunity to respond to material relied upon in a decision against it.

    6. The e-cigarette prohibition law did not justify the rejection order

    During the appeal, the Controller relied on the Prohibition of Electronic Cigarettes Act, 2019. However, the Court noted that this ground was not part of the original rejection order or the pleadings.

    The Court further observed that the 2019 legislation regulates activities such as production, manufacture, import, export, sale, distribution, storage, and advertising. It does not itself determine whether a patent should be granted. The Controller could not defend the rejection by adding new grounds after issuing the decision.

    7. Constitutional and public-health provisions were improperly invoked

    The Controller had relied on Article 47 of the Constitution, which directs the State to improve public health. The Court held that this reliance was misplaced in deciding patentability under Section 3(b). It also found that Section 83(e) of the Patents Act had been incorrectly applied on the assumption that a patent grant necessarily results in commercialization and public-health consequences.

    Why the ruling matters

    The decision reinforces several important limits on patent examination in India:

    • Patentability must be assessed on the claimed invention, not on assumptions about a particular product category.
    • Section 3(b) demands evidence-based and reasoned analysis, especially where an objection concerns health, public order, or morality.
    • A patent is not a regulatory licence. Granting a patent does not authorize commercial activity prohibited or regulated under other laws.
    • Procedural fairness is essential. Applicants must be informed of and allowed to answer the material used against their applications.
    • Post-hoc reasons cannot repair an invalid order. The Controller’s decision must stand or fall on the reasons contained in the order itself.

    Outcome

    The High Court set aside the Controller’s rejection of ITC’s patent application and returned the matter for fresh consideration. All substantive questions remain open, meaning the Controller must now reassess the application independently, give the parties a proper hearing, and issue a reasoned decision based on the law and the record.

    The ruling clarifies that Section 3(b) is a narrow, evidence-based safeguard against genuinely harmful or morally impermissible inventions, not a blanket basis for rejecting inventions merely because they may be associated with tobacco or aerosol-generating products.

    Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.

    Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.

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    Ravi Shekhar Jha – Advocate, Bar Council of Delhi

  • Bombay High Court Sets Aside Patent Refusal for Safety Syringe

    Bombay High Court Sets Aside Patent Refusal for Safety Syringe

    Date: 01.09.2026

    A recent judgment by the Bombay High Court has brought significant attention to the standards of reasoning required in patent application decisions. The case, Medipack Global Ventures Private Limited vs. Assistant Controller of Patents, centered on the rejection of a patent application for a novel safety syringe. This article provides a detailed overview of the dispute, the legal arguments, and the implications of the Court’s decision for patent applicants and the Indian patent system.

    Background: The Patent Application

    Medipack Global Ventures filed a patent application for a single-use safety syringe designed to prevent reuse and reduce infection risks. The invention featured:

    1. A barrel with inner tear-off notches
    2. A plunger with a breakable section and locking grooves
    3. A removable spacer to prevent premature plunger entry

    The design ensured that after use, the plunger would lock and break, rendering the syringe unusable and thus enhancing patient safety.

    The Dispute: Grounds for Rejection

    The Assistant Controller of Patents rejected the application on two grounds:

    • Lack of novelty
    • Lack of inventive step

    Medipack challenged this decision, arguing that:

    • The hearing notice only raised the issue of inventive step, not novelty.
    • The rejection order lacked independent reasoning and merely reproduced prior art and the applicant’s claims without substantive analysis.

    Key Legal Arguments

    Petitioner (Medipack Global Ventures)

    • Violation of Natural Justice: The Controller introduced a novelty objection in the final order without prior notice, denying the applicant a chance to respond.
    • Non-Speaking Order: The order failed to provide independent reasoning or analysis, simply copying claims and prior art without mapping or explaining how the invention was anticipated or obvious.
    • Failure to Follow Patent Office Manual: The Controller did not conduct a holistic assessment of the invention as required by the Patent Office Manual, nor did it provide structured reasoning for combining prior art.
    • Reliance on Precedents: The petitioner cited Delhi High Court cases criticizing the endemic problem of non-speaking, copy-paste orders in patent refusals.

    Respondent (Assistant Controller of Patents)

    • Order Should Be Read as a Whole: The respondent argued that the order, when read in its entirety, showed due consideration of the claims and prior art.
    • Implicit Reasoning: The respondent maintained that the Controller’s reasoning was implicit in the order, even if not explicitly detailed.

    The Court’s Analysis and Decision

    Justice Arif S. Doctor found in favor of Medipack Global Ventures, highlighting several critical points:

    1. Natural Justice Breach: The Controller rejected the application on novelty grounds without prior notice, violating the applicant’s right to respond.
    2. Lack of Reasoned Order: The order was unreasoned, merely reproducing claims and prior art without explaining how the invention was anticipated or obvious.
    3. Requirement for Speaking Orders: The Court reiterated that patent refusal orders must be reasoned and address each objection systematically, as established in prior Delhi High Court rulings.
    4. Failure to Follow Procedure: The Controller ignored the Patent Office Manual’s requirement for a holistic and structured inventive step analysis.

    Final Order

    • The impugned order was set aside.
    • The matter was remanded for fresh consideration by a different Controller.
    • The Court clarified that no aspersion was cast on the previous Controller.

    Implications for Patent Applicants and the Patent Office

    This judgment reinforces the necessity for:

    • Transparent and Reasoned Decisions: Patent authorities must provide clear, detailed reasoning for refusals, addressing each objection and applicant submission.
    • Adherence to Natural Justice: Applicants must be given notice of all grounds for refusal and an opportunity to respond.
    • Structured Analysis: Decisions must follow the guidelines in the Patent Office Manual, especially regarding inventive step and novelty.

    Conclusion

    The Bombay High Court’s decision in the Medipack case is a significant step toward improving the quality and transparency of patent examination in India. It serves as a reminder to both applicants and patent authorities of the importance of reasoned, fair, and procedurally sound decision-making in the patent process.

    Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.

    Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.

    Handy Download:

    Ravi Shekhar Jha – Advocate, Bar Council of Delhi