Calcutta High Court
Itc Ltd vs Assistant Controller Of Patents And on 24 July, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIPD-9
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
Intellectual Property Rights Division
IPDPTA/6/2024
ITC LTD
VS
ASSISTANT CONTROLLER OF PATENTS AND
DESIGNS
Before:
The Hon'ble Justice RAVI KRISHAN KAPUR
Date: 24th July, 2025
Appearance:
Mr. S.N. Mookherjee, Sr. Adv.
Mr. Tarun Khurana, Adv.
Mr. Sourav Bhagat, Adv.
Mr. Sarathi Dasgupta, Adv.
Miss. Yamini Mookherjee, Adv.
Mr. Jishnujit Roy, Adv.
...for appellant
Mr. R.P. Mukherjee, Adv.
Mrs. Priti Jain, Adv.
..for the Controller
The Court: This appeal is against an order dated March 27, 2024 passed
under section 15 of the Patents Act, 1970 rejecting Patent Application No.
201731045826 in respect of an invention titled "METHOD OF PRODUCING
AEROSOL GENERATING SUBSTRATE".
In passing the impugned order, the respondent has dismissed the
application on the grounds of non-patentability under section 3(b) of the Act as
also on the ground of lack of inventive step under section 2(1)(j) of the Act and for
lack of industrial application.
One of the principal grounds urged by the appellant is that the impugned
order has been passed in violation of the principles of natural justice.
It is contended that in passing the impugned order, the Controller has relied
on technical and scientific materials, details of which were admittedly not
furnished to the appellant either at the stage of issuance of the hearing notice or
during the course of the hearing. The hearing notice issued on 4 December 2023 in
connection with the prosecution of the concerned application merely cites that the
invention is not patentable under section 3(b) without reference to any other
materials in support of such conclusion. In such circumstances, the Controller has
for the first time relied on several documents and materials in the impugned order
without affording an opportunity to the appellant to deal with such materials
which form the basis of the impugned order.
It is submitted on behalf of the appellant, that in two recent decisions
[judgment in IPDPTA/121/2023, ITC Limited vs. The Controller of Patents, Designs
& Trademark dated 30th April 2025 (paragraphs 24 to 29 and 36) and the in
IPDPTA/13/2024, ITC Limited vs. The Controller of Patents Designs and Trademark
dated 20th May 2025 (paragraph 14)], this Court has been pleased to set aside the
relevant orders under challenge and remand the matters for fresh hearing on
similar grounds of violation of the principles of natural justice. Significantly, in all
such cases the relevant materials both scientific and technical relied on in the
impugned order had not been furnished to the appellant.
It is also contended that even the findings in the impugned order in relating
to section 2(1)(j) of the Act are vitiated and contrary to well established principles.
It is submitted by the appellant that the hearing notice cursorily deals with the
prior arts very briefly without furnishing any relevance of the prior arts or how
they combine to teach the interplay between the three parameters being the width
of the substrate ranges from 1-40 mm, packing density ranges from 450-700
mg/cc, and the circumference ranges from 20-25mm. There is no mapping nor
basis in the hearing notice to suggest or explain as to how and why the prior art
references D1-D3 teach the above interplay between specific parameters, and
respective ranges claimed therein. On the other hand, the impugned order
transgresses into a new territory for the first time by trying to further analyse and
show the relevance of each of the prior arts, particularly D2, thereby giving no
opportunity to the appellant to present its view and arguments. This is also not in
consonance with the basic principles of natural justice.
With regard to section 3(b), it has been submitted on behalf of the appellant
that the impugned order falls foul of the parameters set in the above judgment in
IPDPTA/121/2023 ITC Limited vs. The Controller of Patents, Designs & Trademark
dated 30th April 2025 and IPDPTA/13/2024 ITC Limited vs. The Controller of
Patents Designs and Trademark dated 20th May 2025 respectively in connection
with the true meaning and purport of the relevant law. All these appeals raised
common questions of law and fact.
In this regard this court in an unreported decision in IPDPTA/121/2023, ITC
Limited vs. The Controller of Patents, Designs & Trademark dated 30th April 2025
has held as follows:
"38. Article 27.2 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS), it is mentioned that:
"27.2. Members may exclude from patentability
inventions, the prevention within their territory of the commercial
exploitation of which is necessary to protect order public or
morality, including to protect human, animal or plant life or
health or to avoid serious prejudice to the environment, provided
that such exclusion is not made merely because the exploitation
is prohibited by their law."
Article 4quarter of the Paris Convention read as follows:
"Patents: Patentability in Case of Restrictions of Sale by Law
The Grant of a patent shall not be refused and a patent shall not
be invalidated on the ground that the sale of the patented
product or of a product obtained by means of a patented process
is subject to restrictions or limitations resulting from the
domestic law."
Taking into consideration, this Court finds that the grant of patent shall not be
refused on the ground that the sale of the patented product or of a product obtained by
means of a patented process is subject to restrictions and limitations resulting from the
domestic law.
39. Section 83(d) and (e) of the Patents Act, 1970 reads as follows :
"83. General principles applicable to working of patented inventions.--
Without prejudice to the other provisions contained in this Act, in
exercising the powers conferred by this Chapter, regard shall be
had to the following general considerations, namely;--
(d) that patents granted do not impede protection of public health
and nutrition and should act as instrument to promote public
interest specially in sectors of vital importance for socio-economic
and technological development of India;
(e) that patents granted do not in any way prohibit Central
Government in taking measures to protect public health."
The patents are granted to encourage inventions and to secure that the
inventions are works in India on a Commercial Scale and to the fullest extent that is
reasonably practicable without undue delay. The patents granted do not in any way
prohibit Central Government in taking measures to protect public health."
The materials and evidence relied upon by the Controller in passing the
impugned Order were not brought to the attention of the appellant at any prior
stage. This practice is ex facie in violation of the principles of natural justice. Such
serious procedural infirmity can in no way be overlooked or ignored. Hence, the
impugned order is remanded to the Registrar for hearing afresh, in accordance
with law.
In such view of the matter and also in view of the indisputable factual
position, there is no need to go into the merits of the case.
IPDPTA/6/2024 is allowed.
The impugned order dated 27th March, 2024 is set aside. The matter is
remanded to the respondent for adjudication afresh in accordance with law. It is
made clear that there has been no adjudication on the merits of the case and all
issues are left open to be decided afresh. The above exercise ought to be completed
within a period of 3 (three) months from the date of communication of this order to
the respondent.
(RAVI KRISHAN KAPUR, J.)
Arsad, AR(CR)
