Case Note & Summary
The Supreme Court heard a batch of appeals arising from a suit for permanent injunction filed by Monsanto Technology LLC and others (plaintiffs) against Nuziveedu Seeds Ltd. and others (defendants) for alleged infringement of patent No. 214436 relating to Bt cotton technology, including the trademarks 'BOLGARD' and 'BOLGARD II'. The plaintiffs had entered into a sub-licence agreement with the defendants in 2004, which was terminated in 2015 due to disputes over licence fee/trait value following a price control regime. The plaintiffs sought an interim injunction under Order 39 Rules 1 and 2 CPC, which the Single Judge granted in part, directing parties to remain bound by the sub-licence agreement and that licence fee be governed by law. The Single Judge did not decide the defendants' counter claim for revocation of the patent under Section 64 of the Patents Act, 1970, and left the issue of patent validity for trial. On appeal, the Division Bench held that the patent was excluded under Section 3(j) of the Patents Act as it related to plants and seeds, allowed the counter claim, and revoked the patent. The Supreme Court set aside the Division Bench's order, holding that the issue of patentability under Section 3(j) involves mixed questions of law and fact requiring expert evidence and cannot be summarily decided at the interim stage. The Court noted that the plaintiffs' claims 25-27 relate to a nucleic acid sequence (DNA construct), which is a chemical composition, not a plant or seed, and its patentability requires determination based on evidence. The Court also observed that the PPVFR Act does not cover genes or DNA constructs. The matter was remanded to the trial court for fresh consideration of all issues, including patent validity and infringement, after trial. The Court directed that the parties shall continue to be bound by the Single Judge's interim order regarding licence fee/trait value in accordance with law.
Headnote
A) Patent Law - Interim Injunction - Summary Revocation - Section 3(j) Patents Act, 1970 - The Division Bench erred in summarily revoking the patent at the interim stage without trial, as the issue of patentability under Section 3(j) involves mixed questions of law and fact requiring expert evidence. The Single Judge had rightly left the matter for trial. (Paras 8-10, 12-14) B) Patent Law - Patentable Subject Matter - Nucleic Acid Sequence - Section 3(j) Patents Act, 1970 - A nucleic acid sequence (DNA construct) is a chemical composition, not a plant or seed, and its patentability under Section 3(j) requires determination based on evidence. The exclusion under Section 3(j) for plants/seeds or essentially biological processes does not automatically apply to a DNA construct. (Paras 9-10, 12-14) C) Plant Varieties Protection - Scope of PPVFR Act - Section 2(za), 14, 15 Protection of Plant Varieties and Farmers' Rights Act, 2001 - A gene or DNA construct is not a 'plant variety' under the PPVFR Act as it does not constitute a 'plant grouping' within a single botanical taxon. The PPVFR Act does not cover such inventions. (Para 11) D) Civil Procedure - Counter Claim - Revocation of Patent - Order 39 Rule 1 and 2 CPC - A counter claim for revocation of patent cannot be decided summarily at the interim stage without trial, especially when the Single Judge had only issued notice on the counter claim. The Division Bench's decision to allow the counter claim without trial was premature. (Paras 8, 12-14)
Issue of Consideration
Whether the Division Bench was justified in summarily revoking the patent under Section 3(j) of the Patents Act at the interim stage without trial, and whether the patent claims are excluded under Section 3(j) as plants/seeds or essentially biological processes.
Final Decision
The Supreme Court allowed the appeals, set aside the Division Bench's order revoking the patent, and remanded the matter to the trial court for fresh consideration of all issues, including patent validity and infringement, after trial. The interim order of the Single Judge regarding licence fee/trait value shall continue.
Law Points
- Patent validity cannot be summarily decided at interim stage without evidence
- Section 3(j) Patents Act exclusion requires factual determination
- PPVFR Act does not cover genes/DNA constructs
- Counter claim for revocation requires trial
