This post summarizes the Delhi High Court’s decision in Syngenta Crop Protection AG vs. Assistant Controller of Patents and Designs, which challenged the rejection of Indian Patent Application No. 202117035647, titled “Methods of Controlling or Preventing Infestation of Rice Plants by the Phytopathogenic Microorganism Gibberella Fujikuroi,” under Section 3(h) of the Patents Act. The Court set aside the refusal order issued by the Assistant Controller of Patents and Designs (“Controller”) and directed a fresh examination of the application in view of the amended claims.
Background/Facts
Syngenta Crop Protection AG (“Syngenta”) filed a patent application for a method to control or prevent rice plant infestation by the phytopathogenic microorganism Gibberella fujikuroi using a compound of formula (I). The Controller rejected the application, asserting that Claims 1 – 11 fell within the scope of Section 3(h) of the Patents Act, which excludes “methods of agriculture” from patentability. The Controller argued that the invention involved fundamental agricultural practices typically carried out by farmers and thus could not be considered a technical solution to agricultural challenges.
Arguments by parties
Syngenta challenged the refusal order, arguing that the Controller had incorrectly applied Section 3(h) to the method of “treatment of plants.” They pointed to the 2003 amendment to Section 3(i) of the Patents Act, which excluded “treatment of plants” from the non-patentable category. Syngenta contended that this amendment reflected the legislature’s intent to recognize plant treatment methods as patentable, distinguishing them from routine agricultural practices excluded under Section 3(h) of the Act.
Syngenta further argued that there is no universal definition of the term “agriculture” and hence the term should be interpreted based on the specific context of the invention to determine its patentability under Section 3(h). Additionally, Syngenta sought to amend the claims by deleting Claims 2 – 9 and 11, and merging Claims 1 and 10.
The Controller defended the rejection, asserting that the impugned order correctly determined that the subject invention fell within the scope of Section 3(h). He argued that the term “agriculture” in Section 3(h) should be interpreted broadly and liberally. To support this, he referred to the definition of “agriculture” in Black’s Law Dictionary, and the Central Agricultural University Act, 1992, both of which provided a wide interpretation, including the prevention of diseases in plants.
Court’s Observations
The Court allowed Syngenta’s proposed amendments, noting that the changes significantly narrowed the scope of the claims and were permissible under the Patents Act. Section 58(1) of the Act grants the Court the authority to amend patent claims, provided the amendments align with the original claims and specifications. Citing judicial precedents and relevant provisions of the Patents Act, the Court observed that there is no specific prohibition on amendments at the appellate stage. The Court also highlighted that the High Court possesses the same powers to amend claims as the Controller under Section 15 of the Act.
The Court further clarified the legal position concerning the scope of Sections 3(h) and 3(i) of the Patents Act. Before the 2003 amendment, Section 3(i) imposed a bar on any process for the treatment of human beings, animals, or plants to make them disease-free. However, the 2003 amendment demonstrated the legislature’s intent to make methods of treating plants for disease control patentable by removing the phrase “or plants” from Section 3(i). The Court emphasized that it could not have been the legislature’s intent to remove the bar on patentability for plant treatment methods under Section 3(i) while simultaneously including them within the scope of Section 3(h).
The Court also cited the Manual of Patent Office Practice and Procedure, highlighting that the examples of subject matter excluded under Section 3(h) relate to methods of ‘producing a plant’ but do not extend to the ‘treatment of plants’.
Conclusion
The Court remanded the matter back to the Controller for a fresh examination of the application in light of the amended claims, with a directive to complete the examination within three months from the receipt of the order.
Relevant Paragraphs
11. Section 58(1) of the Patents Act empowers this Court to amend the patent claims. However, any amendment made under Section 58(1) is subject to Section 59 of the Patents Act. These provisions act as a ‘check and balance mechanism’ to ensure that no new subject matter is introduced and that the scope of the claims is not broadened. The consideration to be kept in mind is that the amended claims must remain consistent with the original claims and specifications.
13. Having heard the learned counsel for the parties, in my considered view, the proposed amendments sought by the appellant do not alter the nature of the Complete Specification of the subject patent application. In fact, the amendments seek to narrow the scope of the claims.
14. In view of the above, I am inclined to allow the proposed amendments. 14.1. It is ordered accordingly.
19. Prior to the amendment, Section 3 (i)of the Patents Act contained a bar on any process for the treatment of human beings or animals as well as plants so as to render them free of disease. By way of the aforesaid amendment, the legislature has chosen to specifically remove the expression ‘or plants’ from the aforesaid Section 3(i)of the Patents Act. Clearly, the object of the amendment was to remove the bar on the patentability in respect of methods for the treatment of plants.
23. I am respectfully in agreement with the aforesaid view taken by the Calcutta High Court. In my opinion, a method of treatment of plants would not fall under the purview of ‘method of agriculture’ as defined in Section 3(h)of the Patents Act. It cannot be the intention of the legislature to remove the bar on patentability in respect of the method of ‘treatment of plants’ under Section 3(i)of the Patents Act and yet include the same within the purview of 3(h) of the Patents Act.
Citation: Syngenta Crop Protection Ag v. Assistant Controller Of Patents, C.A.(COMM.IPD-PAT) 63/2024, Delhi High Court, Available at: https://indiankanoon.org/doc/192885741/
Authored by Dr. Neetha Mohan, Patents Team, BananaIP Counsels
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