Genetically Engineered Crop Patents – Economic Times Publication – “Monsanto’s Climate Resilient Crop Patent Rejection by IPAB” #biotech #genes

Original Source of Article: http://wp.me/p2PCVq-LX

Recently, our views were published in The Economic Times regarding Monsanto’s patent rejection order passed by Intellectual Property Appellate Board (IPAB).

A copy of order may be seen here: Intellectual Property Appellate Board, Chennai – Orders – Monsanto 

A copy of Monsanto’s International Patent publication titled “Methods for enhancing stress tolerance in plants and methods thereof” [WO 2005033318 A2] may be seen here: http://www.google.com/patents/WO2005033318

Background

Monsanto filed patent application No.2407/DEL/NP/2006 on 01/05/2006. The patent office examined the claimed subject matter and raised objections on various grounds specified under Section 3 of the patents act. Monsanto responded to objections and presented its case during personal hearings but patent office rejected the patent. Monsanto then filed appeal before IPAB, which again did not went in its favor.

Subject Matter of Patent Application

This invention relates to method of increasing the biotic and abiotic stress tolerance of plants, which is useful for farmers as it limit their losses. The method disclosed in the patent achieves the objective by expressing a cold shock protein(s) within the cells of said plant, or in simple terms, by modifying the cellular structure of plants.

The invention is applicable to diverse range of seeds, including soybean, com, canola, rice, cotton, barley, oats, turf grasses, cotton, and wheat.

Proceedings at Patent Office

The patent office raised various objections, including objecting that claimed subject matters did not constitute an invention, lacked in inventive step, non-patentable subject matter and other procedural objections. The patent office was not fully satisfied and finally rejected the matter due to lack of inventive step, claims falling within the scope of Section 3(d) of The Patents Act, and subject matter not patentable under Section 3(j) as claims also include essential biological process of regeneration and selection, which includes growing of plant in specific stress condition.

Proceedings at IPAB

Although Monsanto amended the claims with a view to comply with the patent office’s objections, the IPAB rejected Monsanto’s arguments and ruled that patent office was right in rejecting the patent application. However, IPAB decided that in light of amended claims filed by Monsanto, patent office erred in finding the invention not patentable under Section 3(j).

To conclude, IPAB stated that the claimed method is considered as a series of generic steps modified by the plant cell, and what is unquestionably new in this case is the discovery of some additional effects due to expression of known cold shock protein in plants, but, by itself such discovery is merely a discovery of new property of known substance and not an invention. IPAB was not entirely convinced that the discovery of cold shock protein claimed was a step forward and it does not involve a simple leap from prior art to the invention but rather entails a journey with many generic method steps, and consequently found it not patentable in view of obviousness and new use of known substance.

Impact

This patent was very crucial for Monsanto commercially, as although presently Monsanto sells only one variety of seeds (hybrid maize seeds) in India, but if this patent would have been awarded, Monsanto could have enjoyed exclusive patent rights for all the seeds sold in India that used this technology. Under present circumstances, unless this decision is challenged and subsequently overturned, this technology is open for all competitors within the jurisdictional limits of India.

Internationally, the same patent is granted in US, South Africa & Australia, while its still pending in Europe.

It should be noted that since subject genetically modified crops is presently being debated at various levels in India, including BRAI (Biotechnology Regulatory Authority of India) Bill and a suit pending before the Supreme Court, this patent rejection will act as a precedent for all such future matters, according to which, both the patent office and IPAB have applied detailed scrutiny on reasonable grounds to decide this matter. Therefore, companies like Monsanto will now have to plan their business strategies accordingly, as after crossing all the hurdles, even if such GM crops are allowed to be sold in market in future, they might not be able to enjoy exclusive patent rights which will definitely lead to more competition and low pricing of such seeds.

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Contributors: Prity Khastgir and Rahul Dev