Philip Morris Heated Tobacco Patent Ruled Invalid | Fontem Won

According to Law360, a heated tobacco patent of Philip Morris International (PMI) was ruled invalid by the EPO Board of Appeal after being challenged by Fontem Ventures BV, the parent company of Blu vape brand under Imperial Brands (IMB), due to lack of creativity. The decision was made on September 12th and announced on October 10th.

Case Overview

The involved patent number is EP2654470, held by Philip Morris Products SA (a wholly-owned subsidiary of PMI), and relates to a device technology for generating aerosols by heating liquids. Fontem pointed out to the European Patent Office Appeals Board that the patent was too similar to an earlier US aerosol generator patent and lacked innovation.
The committee pointed out that the main difference between Philip Morris’ technology and existing patents lies in the method of detecting the amount of liquid used in the device:
Philip Morris’ system estimates the remaining liquid volume based on the number of cigarettes smoked;
Early patents were judged by evaluating the amount of liquid consumed per inhalation.
The committee stated that the only way to estimate the remaining liquid is to subtract the consumed portion from the initial liquid volume. Therefore, combining early patents with general technical knowledge, technicians can come up with the same technical solution as PMI without creativity. The committee stated in its ruling that “in order to estimate the remaining liquid amount, it is only necessary to calculate or estimate the amount of liquid consumed for each heating cycle and subtract it from the initial amount.

Appeal and ruling details

Fontem Ventures BV convinced the appeals board that PMI’s patents lacked substantial innovation compared to early US patents. Even though PMI’s solution has some differences compared to the US patent, combining it with another early drug inhaler patent still lacks creativity.
The committee believes that skilled technicians will refer to inhaler patents to address technical issues that enhance user experience, such as prompting users when they need to replenish their fluids. The ruling pointed out that whether the inhaler patent includes a heating element is “irrelevant”, because whether it is a drug inhaler or a heating tobacco device, if the liquid balance cannot be determined, they will face the same problem.

The parties involved and the law firm they represent

In addition to Fontem, JT International SA (whose brands include Camel, Silk Cut, Nordic Spirit, etc.) has also raised objections to PMI’s patent, but did not participate in Fontem’s appeal against the patent office’s maintenance of the modified version.
At present, the law firms represented by each party are as follows:
1. Fontem Ventures BV：Gulde & Partner Patent- und Rechtsanwaltskanzlei mbB
2. JT International SA：Gill Jennings & Every LLP
3. Philip Morris Products SA：HGF Ltd

Case number T 0258/24, reviewed by the Technical Appeals Committee of the European Patent Office.