'To Sow Or To Contrive' That Is The Question - An Analysis Of The Ambiguities Of Section 3(H)

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" is a non-patentable subject matter

The seeds of the current form of the Patents Law in India ("Act") were sown in the form of a report on the revision of 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 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 agro-chemical sector, in particular.

Table 1 - Documents referring to Section 3(h) of the Act

Relevant document	Relevant portion
Report on the revision of 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 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 (e.g., treating soil with nematodes or phosphorothioates)
• method of producing mushrooms
• method of cultivation of algae

Furthermore, prior to issuing the Biotech Guidelines, 2013, the Indian Patent Office (IPO) issued Draft Guidelines For Examination of Biotechnology Applications dated December 19, 2012. The IPO in Page 14 of the 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 Section 3(h) of the Act and is not patentable. Thereafter, the said Guidelines were released for public comments. However, following consideration of public comments and the meetings conducted by the IPO with 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 indicates the intent of the IPO to permit the agro-chemical manufacturers to exercise their right. However, this

interpretation is in contradiction to the inclusion of "method of improving soil by treating the soil with a preparation containing specified phosphorothioates" as stated in the Manual of Patent Office Practice in the list of non-patentable inventions 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 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. In the absence of jurisprudence or clear directive in this regard, inconsistencies have been observed with regard to allowance of such claims. Table 2 below provides a list of claims on the 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 the 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 Hydrillaverticillata 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 the 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 is not to be construed as exhaustive.

 

Figures

*Data obtained from DartsIP search engine (https://app.darts-ip.com/dartsweb/login.jsf). The data is only meant to be a representative illustration and

is 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

(DendranthemagrandifloraTzvelev) under in vivo conditions using parts of Chrysanthemum..." (2106/DEL/2010). Again, the Applicant's 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 various stakeholders and the public alike.

Disclaimer – The views expressed in this article are the personal views of the authors and are purely informative in nature.