This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.
Session 1: Role of the Judiciary in Promoting Balanced and Effective IP, Innovation and Creative Ecosystems
Supreme Court of India [2019]: Monsanto Technology LLC v Nuziveedu & Ors., 3 Supreme Court Cases 381
Date of judgment: January 8, 2019
Issuing authority: Supreme Court of India
Level of the issuing authority: Final instance
Subject matter: Enforcement of IP and Related Laws, Patents (inventions)
Plaintiff: Monsanto Technology LLC (appellant)
Defendant: Nuziveedu Seeds Ltd. (respondent)
Keywords: Patentability, revocation of patent, microorganisms, biotechnology, summary adjudication on the validity of patent in a civil suit
Basic facts: The Plaintiff, Monsanto Technology LLC had a registered patent for Nucleotide Acid Sequence (NAS) containing the gene Bacillus thuringiensis (Bt gene). On insertion into DNA of cotton seeds, NAS killed bollworms from inside the seed. The Plaintiff had a sub-license agreement with the Defendant, Nuziveedu Seeds Ltd., granting the Defendant the right to develop “genetically modified hybrid cotton planting seeds” by using Plaintiff’s patented technology and to commercially exploit these modified seeds within the limitations set in the license agreement. The Plaintiff terminated the license on November 14, 2015 due to a dispute about the payment of the license fee.
The Plaintiff instituted a civil suit seeking a permanent injunction restraining the Defendant from selling and/or using seeds/hybrid seeds bearing the Plaintiff’s patented technology. The Defendant filed a counterclaim seeking revocation of the Plaintiff’s patent as being in violation of S. 3(j) of the Patents Act (defining as not patentable: “plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals”) and claiming that protection of seeds was possible only under the Protection of Plant Varieties and Farmers’ Rights Act 2001. The Plaintiff appealed against the nature of the injunctive relief given by the Single Judge of the Delhi High Court, but the Division Bench dismissed the Plaintiff’s appeal upholding the Defendant’s contention with respect to patent exclusion under S. 3(j).
Held: The Supreme Court set aside the order of the Division Bench finding that the Division Bench should have confined itself to examination of the validity of the order of injunction granted by the Single Judge, and that the Division Bench was wrong in deciding the validity of the patent merely on the basis of prima facie examination. It held that the question of validity of a patent is a mixed question of fact and law and therefore evidence and expert testimony were to be considered. The Supreme Court found that the nature of the injunctive relief granted by the Single Judge was in order.
Relevant holdings in relation to new problems coming to judges: patentability of microoganisms: The primary issue was whether NAS becomes part of the plant or of the seed after insertion. The Plaintiff asserted that patent protection was claimed not for the plant but for NAS, which was a microorganism and patentable under the Patents Act. The Defendant claimed that NAS on its own was not capable of industrial application, as it was only after insertion into the seed that it produced the desired result. It further asserted that it used a biological process instead of biotechnology to insert the NAS into a plant cell, and that the NAS was a chemical composition that could not reproduce itself, and as such not a microorganism.
Relevant legislation:
S. 3(j) of the Patents Act 1970 of India
S. 64 of the Patents Act 1970 of India
The Protection of Plant Varieties and Farmers’ Rights Act 2001 of India
Article 27.3 of the TRIPS Agreement