The patentability of an invention is determined/ scrutinized under Section 3 of the Indian Patents Act. The invention in light of public ethics and morals have been well defined under Section 3(b) of the Indians Patent Act.
Understanding Section 3(b) of the Indians Patent Act
Section 3 (b) of the Indian Patents Act states that, “ 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 ”.
In simple terms, the manufacturing or selling of an invention that may be contrary to public moral and ethics and cause serious harm or exploitation to humans, animals or environment. Examples of such inventions include;
- Any device, apparatus or machine or method for committing crime such a theft, burglary, house breaking or killing.
- Any machine or method for counterfeiting of currency notes.
- Any device or method for gambling.
- A method of adulteration of food.
- A method for cloning of humans.
KEY CONSIDERATIONS U/S 3(b) OF THE ACT:
Public Morals: The primary requirement under Section 3(b) is that the invention for which the patent application is being made should not harm the honour, morals and respect of the society.
Ethical Considerations: The patent should not promote any unethical practices such a theft, robbery, killing human and animals, gambling, promoting drugs etc.
CASE LAW AND INTERPRETATIONS
A recent case of e- cigarettes have found immense attention due to its rejection under Section 3(b) of the Indian Patents Act.
In the case of Phillip Morris Products SA v. Assistant Controller Of Patents And Design, an appeal was made by the Applicant Phillip Morris Products SA in the Delhi High Court in lieu of the rejection of patent application “aerosol generating article with multi material susceptor”.
The claim 1 of the prosecuted application (IN201617028283) is recited below:
1. An aerosol-generating article (10) comprising an aerosol-forming substrate (20) and a susceptor (1, 4) for heating the aerosol-forming substrate (20), characterised in that the susceptor (1, 4) comprises a first susceptor material (2, 5) and a second susceptor material (3, 6), the first susceptor material being disposed in intimate physical contact with the second susceptor material, and the second susceptor material having a Curie temperature that is lower than 500 °C.
The patent application (IN201617028283) relates to an e-cigarette, that includes an aerosol-generating article comprising an aerosol forming substrate for generating an inhalable aerosol when heated.
The patent application was refused during the prosecution under Section 3 (b) of the Indian Patent’s Act and attention was also brought to “THE PROHIBITION OF ELECTRONIC CIGARETTES (PRODUCTION, MANUFACTURE, IMPORT, EXPORT, TRANSPORT, SALE, DISTRIBUTION, STORAGE AND ADVERTISEMENT) ACT, 2019” that prevents the production, manufacture, import, export, transport, sale, distribution, storage and advertisement of electronic cigarettes in the interest of public health.
Controllers Decision :
The Controller refused the patent on 1st February 2024, under Section 15 and Section 3(b) of the Indian Patent’s Act. The Controller reasoned that it would be insensible to grant patent applications made for inventions that are disallowed by the government. Grant of such patent applications shall highly impact the society in negative way and promote the unethical practices that shall further create a conflict of interest with the public ethics and morality.
The Appellant (Phillip Morris Products SA) presented the following arguments:
- The Appellant argued that the term “contrary to public morality” is not well defined in the Indian Patent’s Act. The Appellant approaches the bench with the perspective that the e- cigarette claimed in the patent application is being designed to reduce smoking related health risks.
- Secondly, the Appellant asserted that the Indian Patent Office has been granting patents in the similar field that smoking related compositions, articles, wrapping materials and traditional cigarettes. Such cases should also be challenged under Section 3(b) of the Indian Patents Act.
- The Appellant also referred to domestic and international statutes and the 2019 Act reasoning that the Act may allow the selling/ manufacturing of e-cigarettes in India.
Conclusion:
All the arguments were thoroughly reviewed by the bench and the patent application was granted on 4th of July 2024.
The above case shall act as a precedent for future patent applications that may call section 3(b). The current societal thoughts is an amalgamation/ mix of generations having strong opinions and rationales. As one would see e-cigarettes as an alternative to traditional smoking that may reduce health risks, the other section of the society may still consider e-cigarettes as a tool for promoting smoking in youth.
The grant of such patents involves a blend of reasoning and contingent on manufacturers and sellers adhering to strict guidelines for providing clear usage instructions and continuous innovations to reduce health risks.
