Introduction
Section 3(h) of the Patents Act, 1970, states that a method related to agriculture and horticulture falls under inventions not patentable. The purpose of Section 3(h) of the Act is to protect “conventional” practices followed by farmers, and to safeguard traditional farming, cultivation and breeding practices within the public domain, preventing exclusive rights and monopolies through granting of patents. Section 3(h) has survived through amendments and has remained an essential part of the Patents Act, highlighting the importance of the Section.
In 1957, a committee was appointed under the chairmanship of Justice N. Rajagopala Ayyangar, to undertake a comprehensive review of the patent laws and to thoroughly revise and reshape it to better serve the country’s needs. Justice Ayyangar submitted the report, known as the Ayyangar Report, in 1959. The report mentioned that prohibition under Section 3(h) of the Act was intended to apply to “inventions in the field of plant propagation by asexual methods” (paragraph 331 of the Ayyangar Committee Report of 1959).
It is worthwhile to dive into contemporary statute around Section 3(h), by discussing the following cases:
Cases–
Decco Worldwide Post Harvest Holdings B.V & Anr. applied for a patent related to an invention titled “A fungicidal treatment for black sigatoka”, which provided a treatment method for curing black sigatoka, a leaf-spot disease in banana plants caused by the ascomycete fungus Mycosphaerella fijiensis (Morelet) by use of ortho-phenylphenol. The objections raised in the FER, dated December 21, 2018, were under Section 2(1)(j) – lack of novelty, Section 2(1)(ja) – lack of inventive step, Section 3(d) & 3(e) – non-patentable invention, Section 3(h) – method of agriculture and Section 10(4) i.e., lack of clear and sufficient disclosure.
The applicant’s counsel objected by saying that the respondent authorities are misconceived and untenable as the respondent has considered the application under Section 3(h) of the Act, which deals with methods relating to agriculture and horticulture, whereas the subject invention pertains to a process of treatment of plants to render them free of diseases. The applicant further submitted that the Controller has granted patent to similar inventions earlier. However, the application was refused. This resulted in an appeal against the said refusal by the applicant before the High Court[1].
The High Court stressed on the fact that Sections 3(h) and 3(i) cover different categories of inventions. Section 3(h) bars patenting of a method of agriculture or horticulture, and does not contemplate treatment of plants to render them free of disease, whereas Section 3(i) deals with the process of treatment or prevention. Further, the Amendment Act 38 of 2002 amended Section 3(i) of the Act to remove “or plants” from its scope.
The Court also pointed that the Controller has failed to explain why prevention of disease or treatment would fall under agriculture, when a separate provision for it under Section 3(i) exists. Further, Section 3(i) of the Act does not consider treatment of plants as non-patentability. The High Court’s decision concludes that method of treatment of plants cannot be objected under Section 3(h) of the Act, which covers traditional/ conventional methods of agriculture.
In another case[2], Mitsui filed a patent application with claims relating to ‘A method of preventing plant disease and insect damage’. FER was issued by the Patent office, objecting to the claims under Section 3(h) of the Act. The applicant submitted an amended set of claims to address the objections. However, the Patent Office was still not convinced that the amended claims overcome the objection under Section 3(h) and issued a subsequent examination report. The applicant responded with an amended set of claims, along with Form-13, directed to “an insecticidal composition” to overcome the objection raised under Section 3(h) in Second Examination. After examining the amended claims, the patent office still rejected the application, citing that the amended claims do not fall within the scope of the originally filed claims relating to ‘a method of treatment’ under Section 59(1).
The appellant filed an appeal against the refusal order before the Delhi High Court. Appellant’s counsel contested that the Controller had erroneously compared the scope of the amended claims with the scope of the initially filed claims in India, instead of the original PCT application claims. The amended claims fall within the scope of the original PCT application claims and do not violate Section 59(1) of the Act.
The High Court relied upon Section 138(4) of the Patents Act to hold that for a PCT application designating India, the claims, as filed in the PCT application, are inherently considered to be a part of the complete specification for the purposes of the Indian Patents Act. However, during the national phase entry of a PCT application, amendments can be requested under Section 57 of the Act by filing Form 13. However, in the absence of such a request, the Respondent’s examination should be confined to the original PCT claims. The claims amended by the appellant using Form 13 must have been compared against the original PCT claims and not against the national phase application claims filed in India.
The Court noticed lack of reasoning for classifying the subject matter of the claims under Section 3(h) of the Act and held that the analysis must scrutinise whether the invention constitutes a ‘method of agriculture’ or embodies ‘an innovative technical solution to agricultural challenges’. As the latter might not fall within the exclusions of Section 3(h) of the Act. Further, the Court stressed that there should be a clear distinction between purely agricultural methods and those with technical or scientific foundation, addressing agricultural problems. The Court remanded the matter back to the Patent Office to reconsider the claims in relation to Section 3(h) and Section 59(1).
Conclusion
Though further clarity may still be required for interpretation of Section 3(h) of the Patents Act, the above discussed cases clarify that the same is not applicable to ‘an innovative technical solution to agricultural challenge’, particularly those that provide technical or scientific foundation, addressing agricultural problems. Further, the treatment of plants to render them free of disease may not be considered as falling within the purview of non-patentability.
* The authors were assisted by Monika Mishra, Intern.
[1] Decco Worldwide Post Harvest Holdings B.V & Anr. Vs The Controller of Patents and Designs & Anr.
[2]Mitsui Chemicals INC. Vs Controller of Patents
