Tag: #PatentsAct

  • 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 Lack of Reasoned Order and Remands for Fresh Consideration under Section 117A of the Patents Act, 1970

    Bombay High Court Sets Aside Patent Refusal for Lack of Reasoned Order and Remands for Fresh Consideration under Section 117A of the Patents Act, 1970

    Date: 31.08.2026

    The Bombay High Court recently delivered a significant judgment in the case of Deepak Nitrite Limited vs. The Assistant Controller of Patents & Designs. This case revolved around the refusal of a patent application for a novel food-grade sodium nitrite and its production method. The judgment not only impacts the parties involved but also sets important precedents for patent examination standards in India.

    Background of the Case

    Deepak Nitrite Limited filed a patent application (No. 202021019409) for “A Free-Flowing Food Grade Sodium Nitrite and Production Method Thereof.” The Assistant Controller of Patents & Designs, Mumbai, refused the application under Section 15 of the Patents Act, 1970, citing lack of inventive step as per Section 2(1)(ja) of the Act. The refusal was based on the assertion that the claimed reduction in impurities was common general knowledge and that the process steps were routine laboratory procedures.

    Key Arguments Presented

    Petitioner’s Submissions

    1. Product Claims (Claims 1-3):
      • The claimed product was distinguished from prior art by its unique impurity profile, crucial for achieving food-grade quality.
      • The Controller’s order failed to cite any authoritative source for the alleged “common general knowledge” and did not analyze whether the specific impurity profile was disclosed or suggested in prior art.
    2. Process Claims (Claims 4-8):
      • The process involved a synergistic combination and specific sequencing of steps, not merely routine filtration.
      • The Controller isolated a single step (filtration) and ignored the inventive contribution of the integrated process.
    3. Legal Precedents:
      • The petitioner cited several judgments emphasizing the need for a reasoned analysis, identification of inventive concepts, and proper assessment of common general knowledge.

    Respondent’s Submissions

    • The Respondent defended the refusal, arguing that the order was passed after due examination.
    • Upon judicial questioning, the Respondent conceded that the order lacked independent analysis of the process claims and that it would have been more appropriate to consider the invention as a whole.

    Court’s Analysis and Findings

    1. On Common General Knowledge:
      • The Court held that invoking “common general knowledge” without citing identifiable sources is impermissible and arbitrary.
      • The Controller must substantiate such assertions with published sources predating the patent application.
    2. On Reasoned Orders:
      • The Court criticized the recurring pattern of non-speaking, inadequately reasoned orders from the Patent Office.
      • It emphasized the mandatory obligation of Controllers to provide well-reasoned, speaking orders that demonstrate independent application of mind and address all objections and responses.
    3. On Remand and Future Conduct:
      • The Court set aside the impugned order and remanded the matter for fresh consideration by a different Controller.
      • It directed that the application be decided within twelve weeks, ensuring compliance with the standards outlined in the judgment.

    Broader Implications

    This judgment highlights systemic issues in patent examination, such as:

    • Failure to provide applicants a fair opportunity to address objections.
    • Lack of independent reasoning and mechanical reproduction of prior art or objections.
    • The need for transparency and accountability in quasi-judicial decisions.

    The Court’s directions reinforce the importance of reasoned decision-making and adherence to natural justice principles in the patent grant process. The judgment is expected to influence future conduct of the Patent Office and improve the quality of patent examination in India.

    Conclusion

    The Bombay High Court’s decision in Deepak Nitrite Limited vs. Assistant Controller of Patents & Designs is a landmark ruling that strengthens procedural safeguards for patent applicants. It underscores the judiciary’s commitment to upholding fairness, transparency, and reasoned analysis in intellectual property adjudication.

    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