Syngenta Crop Protection AG v Assistant Controller of Patents (2024)

Summary

“The present appeal has been filed under Section 117A of the Patents Act, 1970” ... “and is directed against the impugned order dated 5th April, 2024 passed by the Asst. Controller of Patents and Designs” ... “whereby the Indian Patent Application No. 202117035647 titled ‘Methods of Controlling or Preventing Infestation of Rice Plants by the Phytopathogenic Microorganism Gibberella Fujikuroi’” ... “has been refused.” (para 1) “The impugned order was passed by the Patents Office on 5th April, 2024 rejecting the subject patent application on the ground that the claims of the subject patent application fall within the scope of the words ‘method of agriculture’ under Section 3(h) of the Patents Act.” (para 3) “The impugned order holds that the process of treating fungus infection in crop of rice plant would fall within the scope of fundamental agriculture practices that are carried out by farmers and therefore, the invention in the subject patent application cannot be considered as a technical solution to agriculture challenges.” (para 4) “At the outset Mr. Pravin Anand, learned counsel appearing on behalf of the appellant seeks to amend the Claims 1-10 of the subject patent application and give up the Claim 11 of the subject patent application.” (para 5)

The Court found that “the appellant is narrowing down the scope of the claims by deleting the Claims 2-9 and 11 of the subject patent application and by merging the Claims 1 and 10 to form the proposed claim” (para 10), and held: “In view of the above, I am inclined to allow the proposed amendments.” (para 14) Of the amendment of section 3(i), it held that “Clearly, the object of the amendment was to remove the bar on the patentability in respect of methods for the treatment of plants.” (para 19) Of the decision of the Calcutta High Court in Decco Worldwide, it held: “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.” (para 23) “In view of the discussion above, the appeal is allowed and the impugned order is set aside. The matter is remanded back to the Controller for a fresh examination in light of the legal position laid out above.” (para 27)

What the court decided

1. Narrowing the claims. “A reading of the as-filed claims of the subject patent application and the proposed amendment in the claims would suggest that the appellant is narrowing down the scope of the claims by deleting the Claims 2-9 and 11 of the subject patent application and by merging the Claims 1 and 10 to form the proposed claim.” (para 10)
2. Amendment under section 58(1). “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.” (para 11)
3. Amendment at the appellate stage. “In Societe Des Produits Nestle SA (supra) it was held that an amendment of a patent can be carried out at the appellate stage as well.” The Court reproduced from that judgment: “There is no provision in the Act, which specifically bars the amendment of a patent specification at the appellate stage.” ... “if the High Court, in appeal is considering the issue of grant of patent, it should necessarily have the same powers as given to the Controller under Section 15 of the Act, which includes power to require amendment.” (para 12) “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.” (para 13) “In view of the above, I am inclined to allow the proposed amendments.” (paras 12–14)
4. Procedure. Remand on the ground given up. “Mr. Mittal submits that since the main ground of refusal in the impugned order was on the basis of Claim 11 which has now been given up by the appellant, the matter may be sent back to the Controller for a de-novo adjudication.” (para 15) “I am in agreement with the aforesaid submission and inclined to remand the matter back for a de-novo consideration by the Controller on the basis of the amendments to the claims carried out by the appellants. However, before I do so, I must clarify the position of law in respect of the scope of Sections 3(h) and 3(i) of the Patents Act in respect of which extensive submissions have been made by the counsel for the parties.” (paras 15–16)
5. The amendment of section 3(i). “To begin with, I shall examine the amendments carried out in Section 3(i) of the Patents Act on 20th May, 2003.” (para 17) “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.” (paras 17, 19)
6. Decco Worldwide. “The Calcutta High Court in Decco Worldwide (Supra), while examining a similar issue with regard to the patentability of the method of ’treatment of plants’” ... “held that the method of ’treatment of plants’ does not fall under Section 3(h) of the Patents Act.” The Court reproduced from that judgment: “In fact, no reasons have been given by the Controller as to why a method of treatment of plants to treat fungal diseases would fall within section 3(h) which covers traditional methods of agriculture.” (para 21) “After recording the aforesaid findings, the Calcutta High Court remanded the matter to the Controller for fresh consideration.” (paras 21–22)
7. Treatment of plants and section 3(h). “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.” (para 23)
8. Procedure. Grant on remand in Decco. “Mr. Anand has handed over a copy of the order passed by the Controller pursuant to remand by the Calcutta High Court. The order reflects that the Controller went on to grant the patent to the applicant therein, noting that the method of plant treatment does not fall under the purview of Section 3(h) of the Patents Act.” (para 24)
9. The Manual’s examples. “The Manual of Patent Office Practice and Procedure (version 3.0) dated 26th November, 2019 also cites various examples of the subject matter that are excluded from patentability under Section 3(h) of the Patents Act” which the Court reproduced: “a) A method of producing a plant, even if it involved modification of the conditions under which natural phenomena would pursue their inevitable course (for instance a greenhouse). b) A method of producing improved soil from the soil with nematodes by treating the soil with a preparation containing specified phosphorathioates. c) A method of producing mushrooms. d) A method for cultivation of algae. e) A method for removal of weeds.” (para 25) “Clearly, none of the aforesaid exclusions would cover the methods of ’treatment of plant’.” (paras 25–26)
10. Procedure. Remand. “In view of the discussion above, the appeal is allowed and the impugned order is set aside. The matter is remanded back to the Controller for a fresh examination in light of the legal position laid out above.” (para 27) “The appellant shall place before the Controller the amended claims within three weeks from today and the Controller shall proceed to examine the same in the light of the aforesaid legal position within three months.” (paras 27–28)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 10 October 2026.