By Timothy S. Donahue
Top Takeaways:
- Patent fight: PMI failed to broaden its European vape patent.
- JTI challenge: JTI opposed the patent.
- Still standing: The narrower patent remains in place.
Philip Morris has lost again, but not really.
The European Patent Office’s Technical Board of Appeal (EPO) dismissed Philip Morris Products’ attempt to secure broader protection for a patent covering an aerosol-generating device with multiple power supplies. However, the company’s narrower version of the patent remains in place.
The Aug. 17 decision concerns European Patent No. 3,410,876, titled “Aerosol-generating device having multiple power supplies.” Japan Tobacco International opposed the patent. The EPO published the Board of Appeal’s decision online on Aug. 24.
The case stems from a May 2024 decision by the EPO’s Opposition Division, which found that the patent could be maintained in amended form. Both Philip Morris and JTI initially appealed that decision, but JTI withdrew its appeal in August 2024, leaving Philip Morris seeking broader patent protection.
The case centered on technology involving an aerosol-generating device with an electric heater, a controller, and separate power supplies.
The appeal concerned whether earlier technology had already disclosed key elements of Philip Morris’ claimed invention. The board considered prior art identified as “D10,” a U.S. patent application describing an aerosol-generating device in which a capacitor supplies power to a heating element while a battery charges the capacitor and powers other electronic components.
Philip Morris argued that the capacitor should not qualify as a “power supply” under its patent claims. The board disagreed, finding that the claim’s wording did not exclude capacitors and that the patent itself did not support Philip Morris’ narrower interpretation of the term.
The board found that the capacitor disclosed in the earlier technology was rechargeable, supplied power to the heater, and was separate from the second power supply. It therefore concluded that Philip Morris’ main claim lacked novelty.
Philip Morris also sought protection through an alternative claim that required the first and second power supplies to be batteries. That did not persuade the board either.
The board found that, given the device’s power and energy requirements, choosing a rechargeable battery rather than a capacitor would have been an obvious option for a skilled person. Therefore, the alternative claim lacked an inventive step.
Additional requests from Philip Morris for a third power supply and a configuration with components in the same internal compartment also failed. The board found the relevant claims lacked an inventive step, and another claim request was not admitted to the proceedings.
The patent, in its amended, narrower form, remains in place.
