
Summary: The question of whether an invention for a method of treatment of plants is also a method of agriculture or horticulture, and therefore, excluded from patentability, has been laid to rest by multiple decisions of Indian high courts. This note discusses three recent cases from the Delhi and Calcutta High Courts, which discuss the applicability of Sections 3(h) and 3(i), and will significantly impact patent applications in this space.
Introduction
Intellectual property rights in the agriculture sector are a deeply sensitive subject, because of the potential impact they can have on issues of socio-economic relevance such as food security and farmers’ livelihoods. These concerns have been addressed in various ways, including by way of carving out exceptions to patentability, e.g., Section 3(h) of the Indian Patents Act, 1970 (the Act), which excludes from patentability “a method of agriculture or horticulture”.
However, the law does not attempt to define the terms, “method of agriculture” and “method of horticulture”, as a result of which the provision is often interpreted inconsistently by the Indian Patent Office (IPO).
As the cases discussed below reveal, a particular conflict recurs when the IPO, or a court, is faced with patent applications that relate to methods of treatment of plants. Inventions around this invite discussion not just on Section 3(h), but also Section 3(i), which exclude methods of treatment generally. The decisions provide some direction to how future applications in this subject matter may be treated.
IPO Manual and Guidelines
When the law does not provide adequate guidance, the IPO’s guidelines and manual may provide some clarity or explication.
In the case of Section 3(h), as per the IPO’s Manual of Patent Office Practice and Procedure (the Manual), the following qualify as ‘a method of agriculture or horticulture’:
- A method of producing a plant, even if it involved modification of conditions under which natural phenomena would pursue their inevitable course (for instance a greenhouse).
- A method of producing improved soil from the soil with nematodes by treating the soil with a preparation containing specified phosphorathioates.
- A method of producing mushrooms.
- A method for cultivation of algae.
- A method for removal of weeds.
Additionally, the Guidelines for Examination of Biotechnology Applications for Patent issued by the IPO state that “While deciding patentability under Section 3 (h), conventional methods performed on actual open fields should be construed as method of agriculture/horticulture.” As per the Guidelines, a method of growing leguminous plants as inter-cropping for improving fertility of soil by augmenting nitrogen content of the soil would qualify as a method of agriculture.
1. Decco Worldwide Post Harvest Holdings B.V & Anr. v. The Controller of Patents and Designs & Anr. (AID NO. 11 OF 2021)
This case, before the Calcutta High Court, dealt with a patent application related to an invention titled “A fungicidal treatment for black sigatoka”. The application disclosed a treatment method for black sigatoka, a leaf-spot disease in banana plants, caused by the ascomycete fungus Mycosphaerella fijiensis (Morelet) by use of Ortho-phenyphenol. The application was rejected by the IPO under Sections 3(h) and 2(1)(ja) (for ‘lack of inventive step’).
With regard to the objection under Section 3(h), it was argued that the claimed invention was for a “process for treatment of plants to render them free from disease”. However, the Controller held that the invention was for a method of agriculture and hence not patentable under Section 3(h).
The Court noted that Sections 3(h) and 3(i) of the Act cover different categories of invention. Section 3(h) is limited to a method of agriculture or horticulture and does not contemplate methods of treatment of plants to render them free of disease. At the same time, although Section 3(i) deals with methods of treatment, methods of treatment of plants, specifically, does not fall within its purview. In this regard, the Court noted that the legislature had amended the Act in 2002 to remove “plants” from the scope of Section 3(i). Accordingly, the Court concluded that Section 3(h) covered traditional methods of agriculture, and did not cover methods of prevention of disease or treatment of plants.
The Court reiterated that the Manual merely guides the application of the statutory provisions of the Act and cannot have an overriding effect over the Act. The Court also noted that the Controller failed to explain why the subject patent application fell within the category of “agriculture”, as no reasons was given in the order. The matter was remanded to the IPO to adjudicate the patent application afresh including the question of patentability, after giving an opportunity of hearing to the patent applicant.
2. Mitsui Chemicals Inc vs Controller of Patents (C.A.(COMM.IPD-PAT) 196/2022)
This case came up before the Delhi High Court and dealt with the patent application (3877/DELNP/2009) related to an invention titled “Plant Disease and Insect Damage Control Composition and Plant Disease and Insect Damage Prevention Method”. While rejecting the application, the Controller of Patents held that:
“Since the method of preventing plant diseases and insect damage falls under the category of method of agriculture, the objection raised by Examiner in paragraph 1 is maintained and claims are not allowable under Section 3(h).”
No reasoning or rationale was provided in the rejection order, which was appealed by the applicant.
The Delhi High Court, referring to the judgement in Decco (discussed above), emphasized the necessity for a more nuanced and detailed analysis of the claimed invention, noting that:
“This analysis must scrutinize whether it genuinely constitutes a ‘method of agriculture’ or embodies an innovative technical solution to agricultural challenges that might not fall within the exclusions of Section 3(h) of the Act. Crucial to this assessment is a clear distinction between purely agricultural methods and those with technical or scientific foundation addressing agricultural problems.”
The Court directed the Controller to re-evaluate their objection under Section 3(h) and sent the application back to the IPO.
3. Syngenta Crop Protection Ag vs Assistant Controller of Patents (C.A.(COMM.IPD-PAT) 63/2024)
In this case, which also came up before the Delhi High Court, the patent application (202117035647) related to an invention titled “Methods of Controlling or Preventing Infestation of Rice Plants by the Phytopathogenic Microorganism Gibberella Fujikuroi”
The Controller held that the process of treating fungus infection in crop of rice plant fell within the scope of fundamental agriculture practices carried out by farmers, and therefore, the invention could not be considered as a technical solution to agriculture challenges. Accordingly, the claims as filed were refused under Section 3(h).
The Court reiterated the position taken in Decco and held that a method of treatment of plants would not fall under the purview of ‘method of agriculture’ as defined in Section 3(h). The Court further stated that it could not 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) and yet include the same within the purview of Section 3(h).
The court also referred to the examples listed in the Manual and noted that none of the exclusions listed in the Manual would cover methods of ‘treatment of plant’, and like the previous cases, here too, remanded the application to the Controller for reconsideration.
Conclusion
These High Court decisions – from Calcutta and Delhi – bring much needed clarity on the patentability of methods of treatment of plants. Prospective applicants will also do well to highlight in their applications, where relevant, that they pertain specifically to methods of treatment of plants, so as to not be limited by the exceptions in the law.
Also, the IPO has thus far been less inclined to grant registration to such inventions, relying on a wider reading of Sections 3(h) and 3(i). However, with the contours of exclusion having been delineated by the two high courts, the IPO will likely be better guided in handling such applications.
The repeated emphases on directions to Controllers to pass well-reasoned orders are also helpful, as it will assist applicants (and others) in understanding better as to why their applications were refused or granted in the first place.