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 2 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 3 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." 4 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.