A Division Bench (DB) of the Delhi High Court on April 11, 2018 has invalidated a patent granted to Monsanto Technology LLC for its invention related to the gene sequence responsible for the Bt trait eradicating pests afflicting cotton plants.

As per the Court, the gene sequence has been held to be a part of the seed, and hence unpatentable in terms of Section 3(j) of the Patents Act, 1970 that excludes higher life forms, like plants, animals, and their parts and essential biological processes from the realm of patentability.

Technical issue

With due respect, the proceedings before the DB were unique in ways more than one. It is not quite easy to comprehend why the parties before the Court agreed to have the aspect of patentability in respect of Monsanto’s patent to be examined by the Appellate Court on the basis of material on record, when the actual suit and the counter-claim by Nuziveedu Seeds were pending adjudication before the Single Judge.

Further, it is rather surprising that the parties, specially Monsanto, did not press for adducing expert evidence before the Court in such a technically complex matter. It is, in fact, the deficiency of adequate understanding and appreciation of the science behind Monsanto’s patent that could have resulted in the patent being declared invalid.

Litigations involving patents more often than not involve intricate questions of science and technology. Due to the want of adequate assistance to the Court on such technical aspects, it is quite likely that the Court may not reach the most appropriate conclusion. This case is an apt example.

The DB has held that Section 3(j) prohibits grant of patents to Bt trait-induced varieties as they are parts of “seed”. The Court has held that the trait, by itself has no intrinsic worth; it is meant to be implanted or introgressed (process of introduction of genes from the gene pool of one species into that of another during hybridisation) and later hybridised into a variety to be further hybridised through back-crossing and cross breeding with other existing varieties to produce seeds that are ultimately used. The Court further held that the future propagation of the transgenic plants (after introgression and hybridisation) and the subsequent transfer of the Bt. trait in such plants and consequently, the transgenic seeds, will be a process of nature, and no step of human intervention can impede such transfer of the sequence.

Error of understanding

With due respect what the Court did not comprehend was the fact that Monsanto’s patent neither claims anything that is fera naturae , nor does it claim any part of a plant. The subject claims of Monsanto are restricted to a gene sequence that was innovatively constructed through human intervention in a laboratory set-up. This is included in donor Bt. cotton seeds that is licensed to seed companies for further introgression and hybridisation.

It is a case of apparent misinterpretation probably caused by lack of scientific and technical expertise that a gene sequence that was invented through human intervention was considered to be a part of a seed/plant and hence attracting the embargo of Section 3(j).

The verdict of the DB of the Monsanto case would certainly have repercussions on the jurisprudence of patentability of biological inventions in India. Monsanto has appealed against the DB judgment in the Supreme Court which has posted it for July.

Whether the verdict would be upheld by the Supreme Court is something that needs to be watched. However, in the present instance, the judgment does make an implicit appeal for integrating scientific and technical expertise into the judicial processes, especially in patent disputes that inherently involve perplexing scientific issues.

It is true that the parties to a dispute have the primary responsibility of making the Court understand and appreciate the science behind a patent. However, it may also be worthwhile to explore the option of imparting technical expertise to the judiciary, as well as making a provision for technical assistance to courts adjudicating on patent matters.

The writer is Managing Partner, Corporate Law Group