Delhi High Court Revives ITC's Challenge To Philip Morris's Non-Tobacco Nicotine Patent

In a judgment dated January 12, 2026, Justice Jyoti Singh allowed an appeal filed by ITC, holding that the impugned order suffered from a lack of independent application of mind and was largely a verbatim reproduction of the patentee's submissions and the recommendations of the Opposition Board. The Court remanded the matter to the Patent Office for reconsideration.

The court observed that, “Yet again, this Court is faced with another order where the Controller has taken no pains to independently analyse the grounds taken in the post grant opposition and has merely copy pasted. As rightly observed in Synthes (supra), this is nothing but a total mockery of the exercise of functions vested in quasi-judicial authorities in the Office of Controller General of Patents.”

The appeal arose from a post-grant opposition filed by ITC against a patent titled “Non-Tobacco Nicotine Containing Article,” which was granted to Philip Morris in September 2021. The opposition was rejected by the Patent Office, leading ITC to approach the High Court.

Before the Court, ITC submitted that the impugned order was a cut-copy-paste exercise that reflected no independent application of mind. It was argued that substantial portions of the order were verbatim reproductions of the patentee's written submissions and the Opposition Board's report, without any independent analysis of the detailed grounds raised in the post-grant opposition.

On merits, ITC submitted that the disputed patent was obvious in light of prior-art documents and did not involve an inventive step. It was also argued that the claimed invention amounted to a mere admixture of known components and was barred under Section 3(e) of the Act.

Defending the impugned order, the Patent Office argued that it was a well-reasoned and speaking order passed after independent application of mind. It was submitted that the Controller had carefully analyzed the prior-art documents and had correctly concluded that documents did not teach or suggest all the features of the claimed invention and were insufficient to establish obviousness.

Philip Morris also opposed the appeal, submitting that the Controller had analyzed each claim feature in light of the grounds of opposition and the cited prior art. It was argued that mere concurrence of Patent Office with the patentee's submissions could not be construed as absence of independent reasoning.

Upon examining the impugned order, the Court found merit in ITC's preliminary objection. It noted that substantial portions of the order were verbatim reproductions of the patentee's written submissions and the recommendations of the Opposition Board.

Reiterating that Controllers function as quasi-judicial authorities, the court emphasized that they are required to independently analyze the grounds raised in post-grant opposition proceedings and pass reasoned and speaking orders.

The Court added, “However, if the Controller does not exercise the powers vested in him, in the manner required in law, the result invariably will be that Courts will have no option but to remand the matters, compelled by the fact that they are unreasoned and non-speaking. This would be detrimental to the interest of the patentee/objectors as also public interest as many genuine inventions will remain a piece of paper and will not inure to anyone's benefit.”

Accordingly, the Court set aside the 2024 order and remanded the matter to the Patent Office for reconsideration from the stage of final hearing, clarifying that it had expressed no opinion on the merits of the patent or the opposition.

For Appellant: Senior Advocates Gaurav Pachnanda and J. Sai Deepak with Advocates Meenakshi Ogra, Tarun Khurana, Tapan Shah, Udbhav Gady and Samrat S. Kang

For Respondents: CGSC Nidhi Raman with Advocates Om Ram and Arnav Mittal for Patent Office; Advocates Swati Mittal, Manisha Singh, Abhai Pandey, Manish Aryan, Meenakshi Chotia, Nishant Rai and Akhya Anand for Philip Morris