On 23 February 2024 the Delhi Excessive Courtroom issued a ruling in Mitsui Chemical compounds v Controller of Patents, by which it adjudicated on points regarding the:
- remedy of claims throughout a PCT software’s nationwide part entry into India;
- patentability of a technique of agriculture underneath Part 3(h) of the Patents Act 1970; and
- process for declare amendments underneath Part 59 of the Patents Act.
Part 3(h) of the Patents Act bars the patenting of innovations referring to a technique of agriculture or horticulture. Additional, any amendments within the specification or patent claims are ruled by the provisions of Sections 57 and 59 (CA (COMM IPD-PAT) 196/2022).
Case background
Mitsui filed a patent software with nationwide part claims directed in direction of a “methodology of stopping plant illness and bug harm” (3877/DELNP/2009). The claims have been subsequently amended to “an insecticidal composition” to beat an objection raised by the Indian Patent Workplace (IPO) underneath Part 3(h). Nonetheless, the IPO nonetheless refused the patent software underneath Part 59(1) on the premise that the amended claims didn’t fall inside the scope of the unique claims directed in direction of a technique of remedy of vegetation. The objection on the nationwide part claims underneath Part 3(h) was additionally maintained.
Mitsui filed an enchantment towards this order on the Delhi Excessive Courtroom. It contended that the IPO had erred in its evaluation of the unique claims as ‘methodology claims’ within the nationwide software. and argued that since no such request for amending the claims was made whereas submitting the nationwide part software in India, the unique PCT claims outlining an insecticidal composition ought to have been thought-about when evaluating the scope of the amended claims (and never the pre-amended claims/nationwide part claims that have been directed in direction of a “methodology of stopping plant illness and bug harm”).
Delhi Excessive Courtroom choice
The courtroom relied on the provisions of Part 138(4) of the Patents Act, which states that for a PCT software designating India, the claims as filed within the worldwide software are inherently thought-about to be a part of the whole specification. The courtroom additional emphasised the provisions of Part 138(6), which allows candidates to include amendments which might be proposed earlier than the worldwide looking or preliminary examination authorities into their nationwide part software in India – ought to they select to take action.
With no proof of any modification request underneath Type 13, in keeping with the courtroom, the IPO had mistakenly referenced the nationwide part claims directing to a “methodology of stopping plant illness and bug harm”, as a substitute of the unique PCT claims.
It was additional clarified that whereas a 2016 modification to Rule 20 of the Patent Guidelines permits deletion of claims with out submitting an modification software, this modification didn’t influence the applying in query because it was filed in 2009 – previous to the closing date. This ruling emphasises that being unable to reintroduce deleted PCT claims through the prosecution stage of nationwide part functions was on account of misunderstanding the declare amendments process.
The courtroom additionally careworn that when rejecting an software underneath Part 3(h), a extra nuanced and detailed evaluation is required to find out whether or not the invention genuinely constitutes a technique of agriculture, or embodies a technical answer to agricultural challenges that doesn’t fall inside the scope of Part 3(h). This echoed a Calcutta Excessive Courtroom ruling in Decco Worldwide Submit Harvest Holdings & Anr v The Controller of Patents and Designs & Anr (CA (COMM IPD-PAT) 196/2022).
Accordingly, the courtroom concluded that the impugned order was unsustainable and set it apart, remanding the matter again to the IPO for de novo consideration.
Key takeaways
This judgment underscores the significance of procedural adherence within the analysis of patent declare amendments throughout prosecution, in addition to reasoned orders by the IPO. It additionally establishes that strategies of plant remedy are distinct from conventional strategies of agriculture and might not be censured by Part 3(h) of the Patents Act.
