Chapter II of the Indian Patents Act, 1970 (hereinafter the “Act”) enlists Inventions not patentable. Section 3(h) of the Act mandates that “a method of agriculture or horticulture” as non-patentable subject matter.
Background
The seeds for the current form of the Patents law in India ( “Act”) were sown in the form of a report on the revision of the Patents Law, commonly known as the Ayyangar Report, 1959. In what may be construed as an attempt to safeguard the rights of the average farmer, Justice Ayyangar in his Report, 1959 clarified that the prohibition under the current 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). The understanding of the scope of this Section has led to inconsistencies associated with IPO decisions and the lack of clarity has affected the agrochemical sector, in particular
Table 1- Documents referring to Section 3(h) of the Act.
| Relevant document | Relevant portion |
| Report on the revision of the Patents Law, 1959 (Ayyangar Report, 1959) | Page 121- Patents for inventions in the field of plant propagation by asexual methods [which would fall under para. (d)] are specifically permitted by the Patents Acts of the U.S.A. and of South Africa, but not in any other country. They have never been granted in India and the enactment of para (d) will remove any doubt that might exist as regards the patentability of such inventions. |
| The Guidelines for Examination of Biotechnology Application for Patent (Biotech Guidelines, 2013), issued on March 25, 2013 | Page 14- According to Section 3 (h) of the Act, a method of agriculture or horticulture is not considered as patentable subject matter. While deciding patentability under Section 3 (h), conventional methods performed on actual open fields should be construed as method of agriculture/horticulture. |
| Manual of Patent office practice and procedure (version 01.11 as modified on March 22, 2011) | Section 0.8.03.05.07- A method of agriculture or horticulture is not an invention. Examples of subject matters excluded from patentability under this provision are: (a) A method of producing a plant, even if it involved a 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. |
Considering the above, and in the absence of any other decision or guideline defining the boundaries of “agriculture” and “horticulture,” the following are examples considered non-patentable {as per the Section 3(h) of the Act}-
· conventional methods performed on actual open fields
· asexual methods of plant propagation
· method of producing a plant, even under modified conditions (such as a greenhouse)
· method of producing improved soil (for e.g. treating soil with nematodes or phosphorathioates)
· method of producing mushrooms
· method of cultivation of algae
Furthermore, prior to issuing the Biotech Guidelines, 2013, the Indian Patent Office (IPO) issued a Draft Guidelines For Examination of Biotechnology Applications dated 19th of December, 2012. The IPO in Page 14 of said Guidelines by means of an illustrative example stated that, "A method of spraying a phyto-sanitary composition on plants comprising peptides of formula....." is a method of agriculture under the Section 3(h) of the Act, and is not patentable. Thereafter, said Guidelines were released for public comments. However, following consideration of the public comments and the meetings conducted by the IPO with the various stakeholders, the IPO replaced the above-mentioned illustrative example in the final Biotech Guidelines, 2013, to state, “A method of growing leguminous plants as inter-cropping for improving fertility of soil by augmenting nitrogen content of the soil”. The replacement of the illustrative example under Section 3(h) of the Act. Additionally, it is worth pointing out, that the Biotech Guidelines are silent with regard to the meaning of the words “agriculture,” “conventional” or “horticulture”. Accordingly, several definitions of “agriculture” have been provided as exemplified in the Controller’s order on the Indian Patent Application No. 2533/KOLNP/2010 that quotes various definitions of agriculture for establishing grounds for an objection under Section 3(h) of the Act.
Perspective
The various cited references in the above section point to the discrepancy in interpretation of Section 3(h) of the Act. In light of the same, various claims have been frequently disallowed by the IPO (see Figure 1). In particular, claims pertaining to “method of controlling pest” are often disallowed by the IPO, even though the method is not specifically prohibited in the Act or in any of the supporting documents mentioned above in Table 1. However, the Table 2 below provides a list of claims on said subject matter that have been allowed by the IPO.
Table 2- List of allowed “method of pest control” claims.*
| INDIAN PATENT NO. | CLAIM |
| 247017 | Claim 1- Method of controlling weeds in vicinity of herbicide tolerant sunflower plant…. |
| 243012 | Claim 1- Method of protecting seeds and plants against attack by a pest selected from class Insecta,… |
| 213177 | Claim 1- A method for controlling lepidopteran, homopteran, hemipteran, thysanopteran and coleopteran insect pests, comprising: contacting the insects or their environment with an arthropodicidally effective amount of a compound of Formula I,… |
| 213026 | Claim 7- A method of controlling harmful plants, which comprises applying the herbicide… |
| 257076 | Claim 1- Method of reducing phytotoxicity to a crop at the locus caused by the application thereto of a herbicidal benzoylisoxazole of the formula I… |
| 204978 | Claim 1- A method for controlling arthropods comprising contacting the arthropods or their environment with an arthropodicidally effective amount of a compound of Formula 1,… |
| 218603 | Claim 14- A method for controlling an invertebrate pest comprising contacting the invertebrate pest or its environment with a biologically effective amount of a compound of any of claims 1… |
| 228559 | Claim 1- A method of controlling pests in crops of transgenic plants comprising… |
| 223543 | Claim 1- A method of controlling harmful organisms in genetically modified cotton plants which contain a gene derived from… |
| 210488 | Claim 1- Method of combating or controlling pests that are harmful to rice crops, characterized in that the crops are dusted or soaked or misted with... |
| 257946 |
Claim 1- A method of controlling the aquatic weed Hydrilla verticillata which comprises allowing an imidazolinone herbicide, which is (RS)-2-(4-isopropyl-4-methyl-5-oxo- 2-imidazolin-2-yl)-5-methoxymethylnicotinic acid (imazamox) or an acceptable salt thereof to act on the aquatic weed and/or its aqueous habitat containing seeds or other propagating organs of said aquatic weed, wherein the application rate is from 25 ppb to 300 ppb. |
| 269443 | Claim 1- A method of treating horticultural crop plants comprising said plants one or more times with a liquid composition, wherein said liquid composition comprises one or more cyclopropenes, wherein said plants are bell pepper plants and wherein one or more said contacting steps is performed at the initiation of the first bloom period. |
*Data obtained from DartsIP search engine (https://app.darts-ip.com/darts-web/login.jsf). The data is only meant to be a representative illustration and not to be construed as exhaustive.
Concluding remarks
The purpose of Section 3(h) of the Act is to protect what may commonly be construed as “conventional” practices followed by a farmer. On the other hand, it is interesting to note that a claim pertaining to “A process for preparing an exogenous recombinant protein wherein the protein is excreted in the digestive secretion of the trap of the carnivorous plant...” was refused by the IPO (2245/DELNP/2009) under Section 3(h) of the Act. The arguments by the Applicant, that cultivation of a carnivorous plant should not be considered as “conventional” practice of agriculture was not upheld. Another noteworthy example of a disallowed claim (under Section 3(h) of the Act) pertains to “a genotype independent technique for rapid multiplication of Chrysanthemum (Dendranthema grandiflora Tzvelev) under in vivo conditions using parts of Chrysanthemum...” Again, the Applicants’ argument highlighting the in vivo approach for propagation as not being a method performed on actual open field was not accepted.. In the light of such diverse practices a clear directive from the IPO or a definitive interpretation of the scope of Section 3(h) of the Act by a judicial forum would be beneficial to the various stakeholders and public alike.
[The authors are respectively Senior Patent Analyst and Joint Director, IPR Practice in Lakshmikumaran & Sridharan, New Delhi]