Scope of Section 3(h) of the Indian Patents Act, 1970 with Landmark Judgments

Introduction and Definition of Section 3(h)

The Indian Patents Act, 1970 (hereinafter, the Act), outlines various exclusions from patentability under Section 3 to safeguard public interest, traditional knowledge, and essential practices. Section 3(h) specifically states that "a method of agriculture or horticulture" is not an invention and thus not patentable. This provision aims to prevent the monopolization of fundamental farming techniques, ensuring that conventional agricultural and horticultural methods remain in the public domain for the benefit of farmers and society.

The Ayyangar Committee Report of 1959, which influenced the Act, emphasized that this exclusion was intended to cover “inventions in the field of plant propagation by asexual methods” (paragraph 331), to protect traditional practices from patent barriers.

Over time, the interpretation of Section 3(h) has evolved, especially in the context of modern agrochemical and biotechnological innovations, leading to judicial scrutiny to distinguish between traditional methods and technical advancements.

The “MANUAL OF PATENT OFFICE PRACTICE AND PROCEDURE”, published by the Indian Patent Office (hereinafter, IPO) in 2011, provides the following examples of non-patentable subject matter under this section (page 89):  “(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 green house)”; “(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”; and “(d) A method for cultivation of algae”.

The “GUIDELINES FOR EXAMINATION OF BIOTECHNOLOGY APPLICATIONS FOR PATENT, published by the IPO in March 2013”, clearly state that - “While deciding patentability under Section 3(h), conventional methods performed on actual open fields should be construed as method of agriculture/horticulture” (paragraph 14). The guidelines also provide the following illustrative claim falling within the scope of Section 3(h) of the Act – “A method of growing leguminous plants as inter-cropping for improving fertility of soil by augmenting nitrogen content of the soil”.

In 2019, the IPO revised the “MANUAL OF PATENT OFFICE PRACTICE AND PROCEDURE” to include an additional example of non-patentable subject matter under Section 3(h) (pages 93-94):  “(e) A method for removal of weeds”.

However, absence of definition or meaning of the words "agriculture" or "horticulture" in the Act has resulted in inconsistent application of Section 3(h) by the IPO, prompting judicial interventions. Some landmark cases that have shaped the jurisprudence on Section 3(h), highlighting facts, issues, arguments, judgments, and conclusions are examined hereinbelow.

Landmark Case 1: Decco Worldwide Post Harvest Holdings B.V & Anr. vs. The Controller of Patents and Designs (Calcutta High Court, 2023)

Facts

Decco Worldwide filed patent application No. 201731000726 titled "A Fungicidal Treatment for Black Sigatoka," claiming a method to treat black sigatoka, a leaf-spot disease in banana plants caused by the fungus Mycosphaerella fijiensis, using ortho-phenylphenol. The method was presented as cost-effective, environmentally friendly, reducing chemical fungicide use, minimizing soil residues, lowering resistance risks, and enhancing plant health and yield. The First Examination Report (FER) raised objections under Sections 2(1)(j) (novelty), 2(1)(ja) (inventive step), 3(d), 3(e), 3(h), and 10(4) (disclosure). After amendments, the Controller refused the application, primarily under Section 3(h).

Issues

The core issue was whether a method for treating plant diseases constitutes a "method of agriculture or horticulture" under Section 3(h). Additional concerns included the validity of objections on inventive step and disclosure, and whether the Controller's order was reasoned adequately.

Arguments

·      Appellant's Arguments: Decco contended that the invention was a treatment method to render plants disease-free, not a traditional agricultural practice barred by Section 3(h). They argued that the Controller failed to justify the classification under Section 3(h) and ignored prior granted patents for similar inventions. They also challenged the lack of reasoning in the refusal order.

·      Respondent's Arguments: The Controller maintained that using ortho-phenylphenol as a fungicide was a known agricultural method, qualifying as a new use of a known substance under Section 3(d), and thus fell under Section 3(h). They highlighted inconsistencies in the claims.

Judgment

The Calcutta High Court distinguished Section 3(h) from Section 3(i), noting that the 2002 amendment to Section 3(i) removed "plants" from its scope (which bars treatment processes for humans and animals), implying legislative intent to allow patents for plant treatments. The court held that  - “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” (paragraph 14). The court also held that  - “the Manual being a mere guiding factor to the statutory provisions of the Act cannot have an overriding effect over the Act.” (paragraph 14). The Court set aside the refusal and the case was remanded for fresh examination.

Conclusions

This judgment clarified that plant disease treatment methods are not inherently non-patentable under Section 3(h) as Section 3(h) applies to traditional agricultural methods, not disease treatments. It underscored the need for reasoned IPO decisions and highlighted the distinction between traditional farming and technical interventions.

Landmark Case 2: Mitsui Chemicals INC. vs. Controller of Patents (Delhi High Court, 2024)

Facts

Mitsui filed a patent application No. 3877/DELNP/2009 titled “A Method of Preventing Plant Disease and Insect Damage”. The IPO issued an FER objecting under Section 3(h). Mitsui amended claims to an “insecticidal composition” via Form-13, but the application was refused for non-compliance with Section 59(1) (amendments must not exceed original claims) and under Section 3(h).

Issues

Whether the amended claims aligned with the original PCT application and if the invention qualified as a method of agriculture under Section 3(h).

Arguments

·      Appellant's Arguments: Mitsui argued that amendments should be compared to the original PCT claims, not national phase claims, per Section 138(4). They contended the invention was a technical solution, not traditional agriculture.

·      Respondent's Arguments: The Controller compared amendments to national phase claims and classified the method as agricultural under Section 3(h).

Judgment

The Delhi High Court found the IPO's reasoning insufficient for Section 3(h) objections and remanded the case for reconsideration under Section 3(h), considering the evolving legal landscape and judicial interpretations. The Court held that  - “The Impugned Order, devoid of any reasoning for classifying the subject matter of the claims under Section 3(h) of the Act, is thus liable to be set aside. The Court emphasizes the necessity for a more nuanced and detailed analysis of the claimed invention. 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” (paragraph 15).

The Court also referenced the earlier Calcutta High Court decision in Decco Worldwide, which drew similar distinctions, stressing that Decco judgment may offer valuable insights into the interpretation of 'methods of agriculture' and the patentability of innovations addressing agricultural problems using scientific principles.

The Court also remanded the case for reconsideration under Section 59(1).

Conclusions

The decision reinforced that innovative technical solutions addressing agricultural issues may escape Section 3(h) exclusion, promoting a balanced approach to patentability in agrotech. The Court stressed that there should be a clear distinction between purely agricultural methods and those with technical or scientific foundation, addressing agricultural problems. This judgment offers valuable insights into the interpretation of 'methods of agriculture' and the patentability of innovations addressing agricultural problems using scientific principles.

Landmark Case 3: Syngenta Crop Protection AG vs. Assistant Controller of Patents and Designs (Delhi High Court, 2024)

Facts

Syngenta filed a patent application No. 202117035647 titled “Methods of Controlling or Preventing Infestation of Rice Plants by Phytopathogenic Microorganism Gibberella Fujikuroi”. The Controller refused it on April 5, 2024, under Section 3(h) as a method of agriculture. Syngenta appealed, proposing amendments to merge claims.

Issues

Whether the method was a patentable “treatment” or excluded under Section 3(h), and if amendments could be allowed at the appellate stage.

Arguments

·      Appellant’s Arguments: Syngenta claimed it was a plant treatment method, patentable post-2002 amendment to Section 3(i). They distinguished it from traditional agriculture, citing Decco, and sought amendments under Section 58(1).

·      Respondent’s Arguments: The IPO viewed it as a known agricultural practice involving compound application, falling under Section 3(h).

Judgment

On November 26, 2024, the Delhi High Court allowed the appeal and amendments, referencing Nestle for appellate amendments. It affirmed that plant treatments are not barred by Section 3(h), per the 2003 amendment intent and Manual guidelines, and remanded for de-novo review.

Conclusions

This ruling expanded Section 3(h)’s scope to exclude only traditional practices, fostering innovation while protecting farmers' rights.

Overall Review and Implications

The purpose of Section 3(h) of the Act is to protect what may commonly be construed as “conventional” agricultural or horticultural practices followed by a farmer. The judgments reflect a progressive judicial trend narrowing Section 3(h) to traditional methods, allowing patents for scientific innovations in agriculture. However, inconsistencies persist, suggesting a need for updated guidelines to prevent overbroad Section 3(h) applications. This jurisprudence balances innovation with public access, crucial for India's agrarian economy. Future cases may further refine boundaries.

Aaysu Mahla

Principal

aaysu.mahla@iprattorneys.com