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IP Case Digest · Patents Act s.3(h)

Section 3(h), Patents Act: case law

3 judgments of the Delhi High Court and the Calcutta High Court applying Patents Act s.3(h), from 2023–2024, each with a headnote by BRB Legal.

3judgments
2courts
2023–2024years

Syngenta Crop Protection AG v. Assistant Controller of Patents

Delhi High Court · Remanded

Refusal set aside and the application for a method of controlling infestation of rice plants remanded. The 2002 amendment removed the words or plants from section 3(i), the object being to lift the bar on patenting methods for the treatment of plants. Agreeing with the Calcutta High Court in Decco Worldwide, the Court held that a method of treatment of plants does not fall within method of agriculture under section 3(h) either, since the legislature cannot have intended to remove the bar under one provision and reintroduce it under the other. None of the exclusions illustrated in the Manual of Patent Office Practice and Procedure, such as producing a plant, producing mushrooms or removing weeds, covers treatment of plants.

Mitsui Chemicals Inc. v. Controller of Patents, C.A.(COMM.IPD-PAT) 196/2022

Delhi High Court · Remanded

Refusal under section 3(h), with an amendment disallowed under section 59, set aside on both counts. On procedure, section 138(4) makes the claims as filed in the international application part of the complete specification for Indian purposes, so where no Form 13 was filed at national phase entry the examination had to be confined to the original PCT claims; the Controller wrongly measured the amended claims against the modified claims filed at national phase instead. Rule 20 was amended in 2016 to permit deletion of claims at national phase entry without a formal amendment application, but deletion only: addition, revision and modification still require section 57. For an application predating that amendment, deletion was not available at all, so the argument that the applicant had deleted claims and could not reintroduce them misread the procedure. On section 3(h) the order merely repeated the Examiner's statement that a method of preventing plant diseases is a method of agriculture, with no analysis of why, and a clear distinction must be drawn between purely agricultural methods and those resting on a technical or scientific foundation.

Decco Worldwide Post Harvest Holdings B.V & Anr. v. The Controller of Patents and Designs & Anr., (AID No. 11 of 2021)

Calcutta High Court · Remanded

Refusal of a patent for a fungicidal treatment for black sigatoka was set aside and the application remanded. The finding that the invention lacked inventive step was unreasoned: the Controller compared prior art D1 to D7 without appreciating what they taught, left the applicant's written submissions unanswered, and did not apply the inventive step tests set out in Avery Dennison. The court restated that a specification is construed by reading the description of the invention before the claims, following Bishwanath Prasad Radhey Shyam.

Other provisions of the Patents Act

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