Future of e-cigarette patent applications in India after the nationwide ban on e-cigarettes

The Indian Government has recently imposed a ban on electronic cigarettes (ecigarettes) by passing the Prohibition of Electronic Cigarettes (Production, Manufacture, Import, Export, Transport, Sale, Distribution, Storage and Advertisement) Act, 2019 on 5th of December, 2019. The Act is deemed to come into force on 18th of September, 2019, i.e., from the date of issuance of the Ordinance to ban e-cigarettes. The Act defines ecigarettes as electronic devices that heat a substance, with or without nicotine and flavours, to create an aerosol for inhalation. For a first time violator, the Act provides for imprisonment of up to one year, or a fine of up to one lakh rupees, or both. For any subsequent offence, the crime will be punishable with an imprisonment of up to three years, along with a fine of up to five lakh rupees. Also, no person is allowed to use any place for the storage of any stock of e-cigarettes. If any person stores any stock of ecigarettes, he will be imprisoned for up to six months, or slapped with a fine of up to fifty thousand rupees, or both.

Since the issuance of the ordinance for banning e-cigarettes by the Indian Government, the Controllers at the Indian Patent Office (IPO) also seem reluctant in allowing the claims directed towards e-cigarettes. For example, among other things, the Controllers have started raising the objection under Section 3(b) for such claims. Section 3(b) 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 is not patentable. As per the latest manual of patent practice and procedures issued by the IPO, the examples of inventions which may fall within the purview of Section 3(b) may include, but are not limited to, device, apparatus, machine or method for committing theft/burglary, for adulteration of food, for counterfeiting of currency notes, for gambling, or invention the use of which can cause injury.

This change in the stand of the IPO towards e-cigarettes raises grave concerns at least for the Applicants having the patent applications relating to e-cigarettes and associated products pending for examination at the IPO. Apart from the novelty objections, the inventive step objections, and other requirements, the Applicants now have to overcome another hurdle introduced by this ban, which arguably appears to be the biggest of all.

It is ironical that while smoking and conventional cigarettes are still allowed in the country, the e-cigarettes which claim to reduce the harmful effects of smoking in comparison to the traditional cigarettes are banned and consequently, the IPO is now reluctant in allowing the corresponding patent applications. Further, the Applicants may argue that these inventions actually focus on reducing the harmful effect of smoking, instead of actually causing serious prejudice to human, animal or plant life. Therefore, such inventions cannot be held to be non-patentable under Section 3(b).

Moreover, the IPO has continuously been allowing patents for similar technical fields and applications. There are numerous patents granted by the IPO relating to smoking articles, smoking compositions, wrapper material enwrapping a tobacco smoking material, and traditional cigarettes. Such patents are still being allowed by the IPO. Therefore, the reluctance of the IPO in allowing the e-cigarette patent applications may seem unfair to the Applicants.

Also, Article 4quater of the Paris Convention states that 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. Therefore, if the Controllers refuse to allow applications relating to e-cigarettes, merely because of the ban, it is in direct contradiction with Article 4quater of the Paris Convention.

Similarly, Article 27 of TRIPS agreement states that members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre 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. It is clear from the plain reading of the Article 27 that a patent application cannot be refused merely for the reason that the exploitation of the associated product or process is prohibited by the local law.

The IPO may also take into consideration the fact that if patent applications relating to e-cigarettes are refused, for example, on the grounds of Section 3(b), such inventions will then be publicly available for use by anybody. Therefore, it would not be practically possible to regularize the use of such inventions considering the wide outreach of the inventions in the public. Rather, by allowing the application, the rights of the invention belong to the Applicant only and it would be possible for the Indian Government to regulate the intended use, if required.

Most importantly, it is relevant to note that the allowance of any patent application relating to electronic cigarettes does not hamper the effect of the ban on electronic cigarettes in India. Since the electronic cigarettes are anyway banned in India, the allowance of the present application does not authorize the Applicant to over-rule the ban and market their product in the Indian market. The ban would supersede the patent right anyway. Therefore, such inventions should be viewed only from the technical perspective and as far as the invention qualifies with respect to the novelty and inventive step criteria and fulfills other relevant requirements, there is no reason for the IPO to refuse such patent applications.

Also, it is worth noting that the Government policies keep changing over time, for example, whenever there is a change in the ruling party. Therefore, the possibility of revocation of this ban in future cannot be negated. In case this ban is revoked by the Indian Government in future, the refusal of these applications at this stage will incur an irreparable loss to the Applicant. Moreover, such rejections are in contradiction with the principle of natural justice, more so, if the ban is revoked in future.

In light of the abovementioned points, the Applicants may consider filing appeals before Intellectual Property Appellate Board (IPAB) against the Controller’s decision, in cases where such applications have been refused on such grounds. Owing to the fact that the IPAB is now fully functional, the Applicants can expect a timely disposal of the appeal. Even one favorable judgement from the IPAB may be used as precedence for similar applications before the IPO, which right now appears to be the biggest ray of hope for the Applicants.

The technical aspect of the e-cigarettes, strictly, from the perspective of patenting should be kept separate from the Government policies. Anyway, the ban supersedes the patent rights and therefore, the grant of a patent application would not allow the Applicant to perform any activity which is banned by the Act. Nevertheless, this situation at the IPO needs to be actively monitored and we can expect this topic to be garnering quite some attention in the upcoming stakeholder meetings at the IPO.

Future of e-cigarette patent applications in India after the nationwide ban on e-cigarettes by Joginder Singh and Piyush Sharma


Article 1st appeared on Lexology