The patent eligibility of “a method of agriculture or horticulture” under the Indian Patent Act 1970 is dictated by exceptions to patentability under section 3(h). This provision was introduced in section 3 of the Patents Act,1970, on the recommendations of the Justice Ayyangar Report 1959. To be more precise, this exception to patent was intended for inventions in the field of plant propagation by asexual methods. Indian courts had the opportunity to interpret the term ‘agriculture’ in Decco Worldwide Post Harvest Holdings … vs The Controller of Patents and Designs & … on May 19, 2023, and recently in Mitsui Chemicals Inc vs Controller of Patents and Designs on February 23, 2024.
In the former case patent for “A fungicidal treatment for black sigatoka”, which provides for 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 was refused by the Controller under section 3(h). In the Mitsui case, the rejection was for “An insecticidal composition, comprising penthiopyrad and dinotefuran as active ingredients, wherein the composition is used for applying the composition to plant seeds or contacting plant seeds with the composition, wherein the content of penthiopyrad is 0.1% to 85% by weight, with respect to the total amount of the composition, and the content of dinotefuran is 0.1% to 85% by weight, with respect to the total amount of the composition again citing section 3(h) exceptions to patent as a method of agriculture.
Though some earlier inventions like (a) A method of spraying a phytosanitary composition on plants comprising peptides of formula A”, (b) A method of producing a plant, (b) A method of producing improved soil, (c) A method of producing mushrooms, (d) A method for cultivation of algae also suffered refusal from the patent office under section 3(h) but no appeal was filed to challenge the orders of the Controller in these cases. This deprived the patent office and patent fraternity of the opportunity to clearly understand the reach and limits of section 3(h) as contemplated by Justice Ayyangar committee.
Impact of Refusals of Patents under Section 3(h)
The refusal of a patent under section 3(h) was intended to protect the right of farmers to practice traditional methods of agriculture without the fear of infringing any patent right. The growth and advances in farming practices led to a boom in innovative farming methods that were distinct and improved from the traditional methods of agriculture or horticulture. A need to relook at the reach of the limits of section 3(h) was felt, and the application, such as Decco Worldwide and Mitsui Chemicals, challenged the refusal of patents under section 3(h). The High Court, in these cases, looked into the provisions of exclusion of methods of agriculture under Section 3(h) of the Act and interpreted its coverage.
Decco Worldwide vs Controller of Patents
In this case, the Controller refused to grant a patent for the invention “A fungicidal treatment for black sigatoka” which provides 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. On appeal, the Calcutta High Court looked deeply into the reasons given by the Controller for placing this invention under the category of method of agriculture to refuse the patent. On finding none, the Court observed that:
“11. In passing the impugned order, the Controller has failed to explain why the subject patent application falls within the category of “agriculture”. 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.
Additionally, the Court found that:
“The Controller has also failed to explain why prevention of disease or treatment would fall under agriculture when there is a separate provision under section 3(i) of the Act.”
The Court explained and observed that:
“It is evident from section 3(i) of the Act that the treatment of plants does not fall within the purview of non-patentability and the Manual being a mere guiding factor to the statutory provisions of the Act cannot have an overriding effect over the Act. Thus, the finding that the subject invention falls within the definition of “agriculture” does not deal with the submissions of the appellants. In this connection, the appellants also placed reliance on the numerous inventions dealing with treatments of plants enumerated in the petition, which have been totally ignored in the impugned order.”
In view of the lack of reasoning, the Court set aside the order of the Controller and stated that:
“Reasons are the foundation of any order passed by any judicial or quasi-judicial authority. The main objective of providing reasons in any order is to provide clarity to the reader and to understand how and why and how the matter has been proceeded ………”
Mitsui Chemicals vs Controller of Patents
In the Mitsui case, the Controller refused the patent for invention with amended claims for “An insecticidal composition, comprising penthiopyrad and dinotefuran as active ingredients, wherein the composition is used for applying the composition to plant seeds or contacting plant seeds with the composition, wherein the content of penthiopyrad is 0.1% to 85% by weight, with respect to the total amount of the composition, and the content of dinotefuran is 0.1% to 85% by weight, with respect to the total amount of the composition.”, on twin grounds that
- the claims made in the patent application fall within the scope of Section 3(h) of the Act, rendering them non-patentable.
- Amending ‘method claims’ to ‘composition claims’ contravenes Section 59 of the Act and has accordingly disallowed the same.
On appeal, the Delhi High Court found that the objection under section 3 (h) is not tenable due to the lack of any substantive analysis or justification explaining precisely why the specific subject matter of the claims falls squarely within the ambit of Section 3(h).
“Impugned Order lacking in substantive rationale. The order merely reiterates the Examiner’s objection that the claimed method of preventing plant diseases and insect damage falls within the non-patentable realm of ‘method of agriculture’ under Section 3(h) of the Act. However, the order lacks any substantive analysis or justification explaining precisely why the specific subject matter of the claims falls squarely within the ambit of Section 3(h) of the Act.
In this case, like the Decco Worldwide case, the Court once again set aside the order of the Controller and remanded it back for reconsideration. The Court emphasizes the necessity for a more nuanced and detailed analysis of the claimed invention where the Controller places them under the category of methods of agriculture under section 3 (h). The Court further directed 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.”
Additionally, the Court directed the Respondent Controller to re-evaluate their objection under Section 3(h), considering the evolving legal landscape and judicial interpretations. This re-examination must draw upon a comprehensive understanding of relevant case law, particularly the significant judgment by the High Court of Calcutta in Decco Worldwide Post Harvest Holdings B. V & Anr. v. The Controller of Patents and Designs & Anr. This judgment may offer valuable insights into the interpretation of ‘methods of agriculture’ and the patentability of innovations addressing agricultural problems using scientific principles.
Looking Forward
If we look carefully at the ruling and observations of the courts in Decco Worldwide Post Harvest Holdings B. V and Mitsui Chemicals case, we will find that in both of the cases, no reason was given by the Controller to place these inventions under section 3(h). This clearly indicates that the Controller is required to justify his placing the subject matter of the application under non-patentable under section 3. If no reason is forthcoming in the order of the Controller, such an order is likely to be set aside by the courts at the first instance itself. This means that the courts in India are alive to the possibility of the claimed inventions that embody an innovative technical solution to agricultural challenges that might not fall within the exclusions of Section 3(h) of the Act.
In the latter case, the Court also cautioned the Controller that crucial to this assessment is a clear distinction between purely agricultural methods and those with technical or scientific foundations addressing agricultural problems. These two landmark cases may serve as guiding principles in assessing the placement of inventions under section 3(h). It may be noted that the patent was granted (IN 537007) to Decco after reconsideration and rehearing of Mitsui is underway. The Controller General may amend the guidelines relating to the coverage of section 3(h) in view of the Decco and Mitsui case. Meanwhile, an expert opinion for processing and prosecution of applications that are likely to fall under section 3(h) would be valuable to get favourable results.
Author: DPS Parmar
First Published by: Lexology here