Renewal fee under Protection of Plant Varieties and Farmers’ Rights Rules, 2003 has to be computed as per Rule 39

A Writ petition filed by Maharashtra Hybrid Seed Co Pvt. Ltd. (hereafter ‘Petitioner’) has been allowed by the Delhi High Court and it has been clarified that Rule 39 of the Protection of Plant Varieties and Farmers’ Rights Rules, 2003 (hereafter ‘the said Rules’) is a special rule relating to renewal of Plant variety registration and provides for the renewal fee to be computed. The Registrar of the Plant and Varieties has been directed to accept the renewal fee as computed under Rule 39(1)(a) for renewing the registration of the plant varieties.

The facts of the case are as follows: –

  1. The petitioner had applied for registration of two wheat varieties referred to as ‘W6001’ and ‘W6301’;
  2. The varieties were registered on 21.12.2009 vide registration No. 118/2009 and 119/2009 respectively;
  3. On 26.08.2009, the Central Government issued a notification, notifying the annual fee to be paid for registered varieties under the Act;
  4. In compliance with the said fee structure, the petitioner paid the annual fee of ₹2,000/- for each of the two registered varieties for the period 21.12.2009 to 02.09.2015;
  5. On 17.12.2015, the petitioner applied for renewal of the registrations in the prescribed Form (PV-6). The petitioner also remitted a renewal fee of ₹18,000/- for each of the two registered varieties. The said amount was computed in accordance with Rule 39 of the said Rules.
  6. On 30.12.2015, the Protection of Plant Varieties and Farmers’ Rights Authority sent a letter calling upon the petitioner to pay the renewal fee for the extended period of registration at a flat rate of ₹80,000/- per year for each variety for renewal of the registration (as per Second Schedule of the said Rules).
  7. The petitioner contested the aforesaid demand and reiterated its position that renewal fee was required to be calculated as per Rule 39(3)(a) of the said Rules, and not in accordance with the Second Schedule of the said Rules. The petitioner was afforded an opportunity of being heard in this regard and its contention was rejected by the impugned Order.
  8. The Petitioner challenged said order in a writ before the Delhi High Court.

The Court allowed the Writ and held that clarified that Rule 39 of the Protection of Plant Varieties and Farmers’ Rights Rules, is a special rule for the renewal fee to be computed. The Court held that the Second Schedule would not override the provisions of Rule 39 of the said Rules for, essentially, two reasons:-

  1. Rule 39 of the said Rules is a special rule relating to renewal of registration and by applying the maxim of generalia specialibus non derogant, that is, a special shall override the general, Rule 39 of the said Rules would override the Second Schedule.
  2. The Second Schedule is an adjunct to Rule 8 of the said Rules and provides the Schedule of fees as payable under Rule 8 of the said Rules. However, Rule 8 of the said Rules does not specifically mention payment of renewal fee. Therefore, although the Second Schedule to the said Rules provides for the renewal fee, there appears to be no provision under Rule 8 of the said Rules, which requires that fee to be paid.
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SC has set aside the order of the DHC that revoked Monsanto’s Indian Patent relating to BT technology

In a historic win, the Supreme Court of India (SC) has today set aside the order the Division Bench of the Delhi High Court (DHC) that revoked Monsanto’s Indian Patent No. 214436 relating to BT technology.

 A suit for infringement and passing off was filed by Monsanto Technology LLC, Monsanto Holdings Private Limited and Mahyco Monsanto Biotech (India) Pvt. Ltd. against three Defendants, namely Nuziveedu Seeds Limited, Prabhat Agri Biotech Limited and Pravardhan Seeds Private Ltd., on the grounds that the Defendants were continuing to “market and sell” Genetically Modified Hybrid Cotton Planting Seeds inspite of termination of the sub-license agreements between the parties, alleging violation of their intellectual property rights covered by the registered Patent (IN 214436) and also trademarks BOLLGARD and BOLLGARD II. Justice R. K. Gauba of the Delhi High Court (DHC) by an order dated 28th March 2017 ruled that Monsanto Technology LLC’s termination of its sublicence agreement with Nuziveedu Seeds Ltd. was illegal and arbitrary. Although, the Court reinstated the agreement, the Court directed payment of trait fee to Monsanto for the use of the suit Patent and trademarks, in accordance with the prevalent local laws in force. The Court also directed modification of the agreement according to the format of the GM Technology Agreement Guidelines, 2016 issued by the Government.

 Subsequently, two appeals were filed against the decision of the Single Judge. In the first appeal, Monsanto appealed the judgment directing them to continue to supply BT cotton transgenic variety to Nuziveedu under the 2015 Sub-Licence Agreements except as to the rate of trait fee payable. The second appeal was filed by Nuziveedu urging the rejection of Monsanto’s Indian Patent No. 214436, which claims to cover an invention titled “Methods for transforming plants to express Bacillus Thuringiensis (BT)  deltaendotoxins”. The Division Bench of the DHC, disposing both the appeals together, dismissed Monsanto’s appeal and held that the patented subject matter falls within the exclusion spelt out by Section 3 (j) of the Patents Act. Monsanto’s suit, to the extent it seeks enforcement of the subject patent, was also dismissed. The Single Judge’s directions to Monsanto to continue with its obligations under the sub-license agreements, including consequential orders with respect to payment and receipt of trait value, were also upheld.

 A special leave petition was filed by Monsanto to the Supreme Court and by a decision of even date the Supreme Court has set aside said order of the Division bench.

 We would revert with details of the order as soon as the same is available. Stay tuned!

 

COMPOSITE SUIT FOR DESIGN INFRINGEMENT AND PASSING OFF MAINTAINABLE

The three-judge bench verdict in Mohan Lal v. Sona Paint, overruled by Five-judge bench of the Delhi High Court in Carlsberg Breweries A/S. V. Som Distilleries and Breweries Ltd.

The High Court held that two causes of action – one for relief in respect of passing off, and another in respect of design infringement under the Designs Act, 2000 – can be joined and tried in a composite suit.

Mohan Lal’s conclusions–that two causes of action, one for relief in respect of passing off, and other in respect of design infringement cannot be joined, ignoring the material provisions of Order II Rules 3 to 6, are erroneous; they are accordingly overruled”, the Court has held.

The present suit concerns infringement of the registered design as well as passing off of the plaintiff Carlsberg’s trade dress and overall get up of the “Carlsberg” mark by defendant, Som Distilleries and Breweries.

The two questions before the Bench for consideration were:

 (a) Is the court compelled by anything in law to reject a plaint for misjoinder, if two causes of action cannot be clubbed;

(b) Are the two causes of action, i.e. a claim for design infringement and the other for passing off, so disparate or dissimilar that the court cannot try them together in one suit

Under the Civil Procedure Code, there is no threshold bar on maintainability of suits on the perceived ground of mis-joinder of causes of action, thus preventing the court from trying a composite suit for two causes of action.

The causes of action that can be united in one suit have already been visualized under Order II Rule 3 of the CPC, and any bar, if so, is expressly provided for. The other bar can be said to be indicated in Section 80 CPC.”

Thus, holding that the conclusion in Mohan Lal, that two causes of action, cannot be joined, was erroneous.

For the second question, the Court noted that both causes of action, are against the same defendants, in respect of the same set of acts and transaction, with the only difference being that the relief claimed is different.

 “In such circumstances, it is inconceivable that a cause of action can be “split” in some manner and presented in different suits.”

The Court observed that a composite suit rather gives the advantage of a “bird’s eye view”, with respect to a common set of facts.

The same court can review the same facts and evidence, and conclude pendente-lite if prima facie passing off is made out,  necessitating interim relief.

Hence, it is important under Order II Rule 3 CPC to see if common questions of law and facts arise in two separate causes of action, whereupon there can be joinder of causes of action in one composite suit which joins two causes of action.

 The Court held that “On account of the existence of common questions of law and fact between the two causes of action of infringement of a registered design and passing off, therefore to a considerable extent, the evidence of the two causes of action will be common.

 In such a situation to avoid multiplicity of proceedings there should take place joinder of the two causes of action of infringement of a registered design and passing off against the same defendant in one suit, otherwise multiplicity of proceedings will result in waste of time, money and energy of the parties and also of the courts.”

Thus, “…a composite suit that joins two causes of action – one for infringement of a registered design and the other for passing off, of the plaintiff’s goods – is maintainable.”

Draft Patent Rules Published by Ministry of Commerce and industry

The Ministry of Commerce and industry has published draft Rules to further amend the Patent Rules, 2003. Objections or suggestions, can be addressed to Shri Sushil K Satpute, Director, DIPP, Ministry of Commerce and Industry, Government of India, Udyog Bhawan, New Delhi-110011 or by e-mail at sushil.satpute@nic.in within 30 days from the publication of draft Rules, i.e., by 4th January 2019.

Some proposed changes by said Rules are as follows:-

As per Rule 24C expedited examination could be filed by Applicants who had selected India as an International searching authority or as an International Preliminary examination authority or by Applicants who fulfil the criteria of being a start-up. The rule has been revised to further include:-

  • applications that have at least one of the applicants as a female
  • applications for which applicant is a government undertaking
  • applications for which the applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office

Rule 55 relating to pre-grant representation has been revised and a new sub-rule (2A) has been added. As per the revised Rule, the Controller would now constitute a bench comprising two members, who shall proceed to dispose of the application and the pre grant representation jointly. If the members of the bench differ in opinion on any issue, the Controller will nominate a third member to the bench and subsequently the majority decision will be treated as final.

The IPO achieved another milestone – issued patent number IN300000

The Indian Patent Office achieved another milestone and has issued its patent number IN300000 in August 2018. The patent has been issued to BASF Corporation for carbon monoxide conversion catalyst.

There has been a  more than 170% increase in the number of applications examined in between 2016-2017. This sharp rise can be  attributed to an increasing number of Examiners and Controllers and in the reduction in time for putting the application in order for grant from 12 months to 6 months. The Patent Office has been taking various steps to not only reduce the backlog but also expedite disposal of the pending applications.

There is also about 50% increase in the number of applications granted in the year 2017 vis-à-vis those granted in the year 2016. Overall, the percentage of applications examined and disposed in the year 2017 was much higher than the year 2016.

With the efforts that the Indian Patent Office has been making towards clearing its backlog, more patents per year are expected to be issued by the IPO in the coming years than in previous years.

 

Pre-grant Opposition against Novo Nordisk’s Patent application dismissed

A pre-grant opposition filed by Intepat IP services in respect of Novo Nordisk’s Patent Application number 2940/DELNP/2007 has been refused by the Ld. Controller, Mr. Naveen Mathur and a patent (No. 299153) granted to Novo Nordisk after examination.

As provided in the decision, the invention covered by the application relates to an injection device/injector pen for administering a medical dose to a patient. In said device the numerals indicating the dose to be ejected from the injection device are displayed over an angle of rotation exceeding one revolution. Further, the numerals indicating the dose to be ejected are arranged along the helical path and displayed on a counting device thus increasing the accuracy in dose setting. Further, the invention uses torsion spring which accumulates and releases energy in an automatic manner.

The Opposition was filed on the following grounds:

(A) Claims 1 to 3 of the Application lack novelty.

(B) Claims 1 to 13 lack inventive step.

A hearing was fixed on 10/01/2018. The applicant’s agent attended the hearing but the opponent did not attended the hearing. The Controller however took the opposition and documents filed alongwith the same on record and considered the same. After considering the submission of the Applicant, the Ld. Controller held that the claim 1,2,3 are novel in view of the cited documents which relate to the use of compression spring which is different as compared to the present invention that uses torsion spring.

Also the opponents ground that Claims 1 to 13 lack inventive step was held to be not maintainable as the Controller held that the citations D1 to D15, alone or in combination, do not teach or suggest to a person skilled in the art, the claimed invention.