Tobacco related inventions are not automatically excluded from patent protection in India

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Pronounced on May 20th, 2025

In a significant ruling addressing the scope and interpretation of morality based exclusions under the Patents Act, 1970, the Hon’ble Calcutta High Court has set aside the rejection of a patent application filed by ITC Limited. The patent, relating to "A Heater Assembly to Generate Aerosol", was earlier refused by the Controller of Patents under Section 3(b) of the Act on the ground that it was prejudicial to human life and contrary to public order and morality. The judgment offers clarity on how such exclusions must be applied and reaffirms the boundaries of administrative discretion in patent examination.

Summary of Facts:

• The invention titled "A Heater Assembly to Generate Aerosol" was intended to deliver aerosol for user inhalation through an assembly that ensures uniform heat distribution across an aerosol-forming substrate.


• Despite the appellant demonstrating inventive step, the patent application was summarily rejected under Section 3(b), which reads as follows:
  
  “3. What are not inventions. - The following are not inventions within the meaning of this Act,- (b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;”


• The Controller concluded that the invention would result in serious prejudice to human life and public order. However, the appellant contended that the Controller had fundamentally misconstrued the nature of the invention, which is not exclusively or necessarily linked to tobacco substrates. The appellant further argued that the order lacked reasoning, was procedurally flawed, and relied on documents not provided during prosecution thus violating principles of natural justice.


• Additionally, the Controller had invoked Article 47 of the Constitution, which forms part of the Directive Principles of State Policy, and Section 83(e) of the Patents Act, 1970, which states:
  
  “patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public.”


• According to the appellant, neither Article 47 nor Section 83(e) is relevant to determining patentability under Section 3(b).

Legal Analysis:

Section 3(b) serves to exclude inventions that by their nature or intended use are contrary to public interest. However, the Court held that the Controller’s interpretation was flawed. It was observed that while the invention could operate on substrates containing tobacco, it is not limited to such use, nor was there any evidence to show that the invention was inherently harmful or immoral.

The Controller’s assumption that the heater assembly would necessarily be used with tobacco was deemed unwarranted. Furthermore, the rejection was not supported by any scientific or technical evidence, and failed to consider that tobacco products are not per se unpatentable in India.

The Court referred to international standards such as Article 53(a) of the European Patent Convention (EPC) and TRIPS, noting that the term "public order" is to be interpreted cautiously, with due attention to context, intent, and technical merit.

The doctrine of exclusionary rights was emphasized that a patent does not amount to a license or governmental approval to manufacture or sell a product, but merely confers the right to exclude others from doing so. The Court clarified that Section 83(e) and Article 47 cannot override or expand the scope of Section 3(b) when no statutory bar is established.


Court’s Findings:

The Hon’ble Calcutta High Court, upon examining the facts and applicable law, made the following observations:

• The Controller failed to demonstrate any nexus between the invention and actual or potential prejudice to life, health, or public morality.
  
  
• The Controller’s reliance on additional documents, without providing them to the appellant during prosecution, was in clear violation of natural justice.
  
  
• The invocation of Article 47 and Section 83(e) was misplaced, as neither provision governs the grant or refusal of a patent.
  
  
• The conclusion that the invention was contrary to public order and morality was cryptic, unreasoned, and unsupported by scientific data.
  
  
• The assumption that a patent grant equals permission to commercialize the product was held to be legally incorrect.
  

In view of the above, the Court set aside the impugned order and directed the Controller to reconsider the matter within three months, after granting the appellant a proper opportunity of hearing.

Conclusion: .

The judgment underscores the importance of a reasoned and objective application of Section 3(b). It cautions against arbitrary use of morality based exclusions and reaffirms that patent examination must adhere to legal standards, procedural fairness, and the statutory scheme of the Patents Act.