Summary
The Calcutta High Court in a recent ruling set aside the rejection of a tobacco-related patent by R.J. Reynolds Tobacco Company. The Court condemned the Controller's use of personal bias under Section 3(b), calling for reasoned, evidence-based evaluations, free from moral presumptions.
In a recent ruling, the Calcutta High Court set aside an order of the Assistant Controller of Patents that rejected a patent application filed by R.J. Reynolds Tobacco Company (hereinafter referred to as RTC) on grounds of Section 3(b) of the Patents Act, 1970. In this case, the Controller of Patents had refused the patent application as it involved an invention relating to ‘Tobacco Sugar Syrup’, which, according to the Controller, was injurious to health. The Court found the impugned order devoid of reasoning, arbitrary, and passed on a preconceived notion against tobacco-related inventions, without independent evaluation of scientific data or evidence.
The Tobacco Application
RTC filed a patent application with the Indian Patent Office bearing number 1940/KOLNP/2013. The application titled “TOBACCO-DERIVED SYRUP COMPOSITION” pertains to a tobacco-derived sugar-containing syrup that can be used as a flavorful tobacco composition and a method for making such a syrup composition.
Claims of the invention
The application contained a total of 37 claims, of which claims 1 and 19 are independent claims. The independent claims read as follows:
Claim 1: A flavorful tobacco composition for use in a tobacco product in the form of a sugar-containing syrup derived from the stalk of a plant of the Nicotiana species
Claim 19: A method for preparing a sugar-containing syrup from the stalk of a plant of the Nicotiana species, comprising:
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- removing an aqueous liquid component comprising sugar compounds from the stalk of a plant of the Nicotiana species or a portion thereof; and
- concentrating the aqueous liquid component to increase the specific gravity of the aqueous liquid component, which results in formation of a sugar-containing syrup suitable for use as a flavorful tobacco composition in a tobacco product.
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Refusal by the Patent Office
The application was refused by the Assistant Controller under Section 3(b) of the Act, which bars inventions whose use is contrary to public order or morality, or which cause serious prejudice to life, health, or the environment. The Assistant Controller rejected the application solely under section 3(b) based on the premise that all forms of tobacco are inherently injurious to health.
Challenging this decision, RTC argued that the 18-page refusal order lacked any meaningful analysis, with 17 pages merely reproducing RTC’s submissions verbatim. No reasoning was provided regarding how the invention violated Section 3(b), nor was there any engagement with the evidence presented, including international patent grants and scientific data.
Court’s findings and analysis
The Court stated that the rejection was based on a broad, unsubstantiated presumption about tobacco’s harm, without assessing the invention’s actual content or intended use.
It also referenced the 161st Parliamentary Standing Committee Report, which critiqued the vague wording of Section 3(b) and cautioned against its arbitrary application. The report expressed the concern that socially useful inventions, such as smoking cessation aids or reduced-risk devices, could be denied protection due to unchecked discretion vested in patent authorities. In line with this concern, the High Court criticized the Controller’s failure to apply objective criteria or provide substantiated findings.
Citing prior decisions, including Kabushiki Kaisha Toshiba v. Asst. Controller of Patents and Designs, Agriboard International LLC v. Deputy Controller of Patents and Designs, and Alfred Von Schukmann v. Controller General of Patents, Designs and Trademarks, the Court reiterated the necessity of reasoned orders and proper application of legal principles in patent adjudications.
Accordingly, the Court set aside the refusal order dated 19th September 2019, and remanded the matter to the Controller for reconsideration within four months. The Court clarified that it did not make any findings on the merits, and all issues remain open for determination in accordance with the law.
Conclusion:
This is not the first time that the patent office has rejected an application on the grounds of “public order” or “morality”. The vague wording of section 3(b) and the subjective interpretation of the clause have always given rise to debates and discussions, especially in the context of morality. While concerns around public health and morality are valid, they must not become a blanket justification for arbitrary refusals, especially without reasoned analysis or evidence-based evaluation. As the Calcutta High Court rightly observed, patent offices must resist the temptation to apply personal or societal biases and instead adhere strictly to legal standards and procedural fairness.
Citation: R.J. Reynolds Tobacco Co. v. Controller General of Patents, Designs and Trademarks, IPDPTA/31/2023 (H.C. Calcutta Apr. 16, 2025).
Article & Accessibility Review: Dr. Kalyan C. Kankanala