Right on the heels of Tejaswini’s post on the Indian Patent Office’s E-Cigarettes patent rejection order, we are pleased to bring to you this guest post by Bharathwaj Ramakrishnan assessing the viability of the argument that the rejection order’s rationale violated India’s international commitments. Bharathwaj is a 3rd year LLB Student at RGSOIPL, IIT Kharagpur and loves books and IP. His previous post can be accessed here.
Does the Indian Patent Office Rejection Order on E-Cigarettes Violate International Treaties?
A very recent post published in SpicyIP discussed the implications and importance of an appeal against a rejection order by the Indian Patent Office that is now pending before the Delhi HC, which might shed light on the interpretation of Section 3(b) in the context of E-cigarettes. In the impugned order major issues were raised by the Patent Office with regards to the lack of inventive step in the subject invention (aerosol generating article with multi material susceptor) and, most importantly, Section 3(b). It was determined by the IPO that the subject invention was contrary to public order or morality and cause serious prejudice to human health, thereby attracting Section 3(b). The previous post discussed these issues at length. However, I wish to focus on and expand on a specific International Intellectual Property Law (IIPL) issue raised in the prosecution history and use it as an opportunity to investigate this set of articles and conflicting interpretations advanced by both the Patentee and Patent office, which might be raised in the appeal too.
The applicant before the Patent office had argued that the rejection order is in violation of India’s international obligations. The refusal to grant a patent under section 3(b) of the Patent Act seems to be in violation of both Article 4quater of the Paris Convention for the Protection of Industrial Property and Article 27 of WTO TRIPS Agreement. To summarise the argument, the first one is that Article 4quater of the Paris Convention does not allow the member states to refuse a patent grant based on certain limitations or restrictions under domestic laws. Secondly, it is argued that Article 27(2) of TRIPS does not allow a member state to refuse a patent grant only because its exploitation is prohibited by local law, even though the exclusion can be due to public order or related exceptions .
I wish to argue that these arguments premised on an interpretation of IIPL treaties that are not accurate and clarifying it is of significance as these treaties have persuasive value before the courts and might also help the courts to interpret the national legislation after taking into consideration the obligation imposed on it by international treaties (here in which Article 4G of the Paris Convention was taken into account while interpreting section 16 of the Patents Act). Thus, it is necessary to have a clear-eyed view of the obligations imposed on India as a member state to these treaties and see whether the Indian Patent Office applying the Patent Act involving e-cigarettes has violated any such obligations.
Making sense of Article 4quater of the Paris Convention:
While India is a signatory to the Paris Convention, Article 4quater of the Paris Convention has been incorporated into the TRIPS Agreement through Article 2. To correctly understand the obligation imposed on India regarding Article 4quater of the Paris Convention, one must look at its travaux préparatoires to understand the scope of Article 4quater. In The Paris Convention for The Protection of Industrial Property A Commentary, Sam Ricketson (para 10.39) traces the drafting history of Article 4quater wherein he states, “The initial proposition discussed in the second committee of the Conference was in somewhat broader terms, being directed at restrictions on exploitation generally, but with a reservation to national laws concerning refusal of protection for inventions that were ‘contrary to morality or public order’. This was resisted by several delegations, including France and the UK, and, following further discussions in the second committee, the present text, limited to the sale of products, was adopted by the Conference.”
Likewise, further observations in the commentary made in the context of interpreting Article 4quater, stating that it is limited to sales. Thus, the consequence is that when a member state has restrictions other than the sale of a product or process to be patented this specific restriction can be grounds under which the grant can be opposed. The point mentioned above about the application of the provision being restricted in its application to restrictions or limitations on sales was also raised in Prof Bodenhausen’s Guide to the Application of the Paris Convention for the Protection of Industrial Property as revised at Stockholm in 1967 (page 65), wherein it stated, “The provision refers only to cases where the sale of the patented product or a product obtained by means of a patented process is restricted or limited by national legislation, and not to the case where the manufacture of such product or the application of a patented process itself is subject to analogous restrictions or limitations.” Thus, from the start, Article 4quater was drafted to provide national legislation with the option to oppose the grant of a Patent when the restrictions themselves go beyond the product’s sale to be patented. The legislation in question The Prohibition of Electronic Cigarettes (Production, Manufacture, Import, Export, Transport, Sale, Distribution, Storage and Advertisement) Act, 2019 envisages an omnibus ban (Extending beyond sale), and the preamble clearly states that it was done with the intent to protect public health. One can have issues with the policy assumptions that motivated the 2019 Act. Still, it is incorrect to argue that the orders issued by the controller refusing grants for e-cigarettes citing the 2019 Act and Section 3(b) are TRIPS non-compliant and in contravention of Article 4 quarter of the Paris Convention. Thus, the Patent Office’s argument that Article 4quater is not applicable here is on point and in line with the travaux préparatoires of the Convention.
Article 27.2 of TRIPS and E-Cigarettes:
Likewise, it has also been argued that Article 27.2 of TRIPS prevents a member country from refusing a grant because there is a local prohibition on the exploitation of the invention. In the Handbook of TRIPS, while explaining Article 27.2, it was stated that “Article 27.2 specifically mentions inventions contrary to human, animal or plant life or health or seriously prejudicial to the environment. The use of the exception is subject to the condition that the commercial exploitation of the invention must be prevented, and this prevention must be necessary for the protection of order public or morality.” Thus, it can be argued that it is insufficient to show that there is a ban as per a local law; something additional is required. Or in other words, there should be a causal connection between the harm caused and the exploitation of the invention.
As was raised in the post discussing the prosecution history in detail, I share the same concern about the Patent Office’s ability to decide whether e-cigarettes should be granted patent protection. There are conflicting positions as to whether e-cigarettes are a danger to public health, for eg Lancet article, ICMR white paper in support of the ban, while this post takes a more nuanced position and criticises the complete ban. The point here is to show that there is debate and that the Patent Office is not able to assess the claims and come to a conclusion. The legislature, being best placed and equipped to make such policy decisions, has come to a decision through an Act. Likewise, the objective of public health has been clearly stated in the preamble of the Act, which the Patent Office, in turn, cited in its rejection order. Therefore, it is clear that the Act is not a mere local ban but was passed to further a policy objective (Public health); therefore, the argument that the refusal to grant is based merely on the prohibition through a local law does not stand.
Likewise, another significant aspect that needs to be kept in mind is that Section 3 of the Patent Act defines “What are not inventions” this is sígnificant as it was pointed out here (page 308) that the word “invention” is not defined under the Article 27 of the TRIPS Agreement thus providing space to the member countries to define what is, what is not an invention. Thus, as the rejection itself was premised on section 3(b) which defines what are not inventions, it’s clear that even Article 27 of TRIPS does not apply as e-cigarettes would not be an invention if the order is upheld by the High Court. From the above, it is clear that the Patent Office implemented the views of the legislature as was expressed in the Act, and such a decision does not violate Article 27.2 of TRIPS or Article 4quater of the Paris Convention.
Thus, the argument that the Patent Office’s decision regarding e-cigarettes after the 2019 Act violates India’s international obligations is unfounded and inaccurate.