In its decision in Mitsui Chemicals Inc v Controller of Patents, dated February 23, 2024, the Delhi High Court set aside the order of the Controller of Patents in PCT national phase application number 3877/DELNP/2009. The impugned order held the claimed invention non-patentable under Section 3(h) and disallowed the amended claims for contravening Section 59 of the Patents Act, 1970.
When filing the national phase application in India, the Appellant amended the claims of the international application without filing any formal request for amendment of claims by way of Form 13. The Appellant then revised its claims in response to the examination report and further in response to the hearing notice. The original claims in the international application claimed an “insecticidal composition“, while the claims filed during national phase entry in India were directed towards a “method of treatment of plant” and the finally amended version of claims refused by the Controller was directed to an “insecticidal composition“. The Controller found the amendments to significantly shift the scope of the claims from a process to a product and ruled that these amendments were not permissible under section 59 of the Patents Act.
Notably, prior to the 2016 amendment of Rule 20, it was mandatory for applicants to formally request amendments at the time of national phase entry, if any amendment was desired. With the 2016 amendment of Rule 20 applicants were permitted to delete claims without a formal request for amendment of claims while entering national phase in India. However, any other form of amendment should be requested formally.
The Appellant contended that since its national phase application predated the 2016 amendment, in the absence of a formal request for amendment of claims when entering national phase in India, the examination of the application should be based on the original PCT application and not on the national phase application containing deleted and modified claims. It was argued that the refused claims fall within the scope of the original PCT claims because of the binding nature of Section 138(4) of the Patents Act, and, thus, do not violate section 59. However, the Controller had mistakenly treated the claims filed during national phase entry in India as the reference point for determining applicability of section 59. Therefore, the issue before the Court was if the reference for assessing whether the refused claims fell within the scope of the original claims, should be the claims of the international application or the amended claims filed when entering national phase in India.
The Court analysed section 138 of the Patents Act and the amendments to the Patents Rules, 2016. The Court found that section 138(4) indicates that for a PCT application designating India, the claims filed in the international application under the Patent Cooperation Treaty (PCT) are automatically deemed to be included in the complete specification. Additionally, section 138(6) allows applicants to include any amendments proposed during the international phase in their national phase application in India.
The Court noted that the 2016 amendment of rule 20 marked a significant shift in the procedure for amendments during the national phase entry of patent applications. The Court observed that, prior to 2016, all types of amendments during a National Phase entry were supposed to be requested by filing form 13. The 2016 amendment aimed at adopting a more nuanced and flexible approach in handling national phase entry amendments. This modification in the rule allowed for the deletion of claims at the national phase entry without filing a formal application for amendment. All other types of amendments had to be requested in form 13.
The Court further for applications filed prior to the 2016 amendment of the Rules, in the absence of a form request for amendment of claims in form 13, the examination by the Patent Office “should be confined to the original PCT claims”. The Court determined that the Appellant’s National Phase application predates the 2016 amendment and did not meet the then-required procedural step of filing an amendment request under section 57 for claim deletion upon National Phase entry. Consequently, any amendment requests formally introduced thereafter were to be compared against the original PCT claims. The Court, therefore, directed the Controller to re-consider the amendment against the PCT claims and re-evaluate the applicability of section 59.
With respect to the Section 3(h) objection, the Court alluded the Controller’s failure to provide a rationale in the impugned order explaining why a method of preventing plant disease and insect damage would fall within section 3(h) of the Patents Act which prohibits the grant of a patent to a method of agriculture or horticulture. Even though the Court did not undertake the exercise of defining the contours of section 3(h), it did remark that it is imperative to draw a distinction between “purely agricultural methods” and those with “technical or scientific foundation addressing agricultural problems”. The Court directed the Controller to re-evaluate their objection under Section 3(h) and interpret the provision by drawing a comprehensive understanding of the judgement in Decco Worldwide Post Harvest Holdings B. V & Anr. v. The Controller of Patents and Designs & Anr., which may offer valuable insights into the interpretation of ‘methods of agriculture’. In conclusion, the seminal decision has placed a significant brick in the foundational base of analysing the ambit of Section 3(h) for argo-inventions. Additionally, the court confirmed that PCT application claims can be reinstated even after they were deleted during the National Phase entry that predates the 2016 Amendment, given that the claim deletion was not formally requested.
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