In a significant order, the Delhi High Court in Mitsui Chemicals v. Controller of Patents made some notable observations on amendment of claims in a PCT application and Section 3(h) of the Patent Act. Discussing this order, we are pleased to bring to you this guest post by Shivam Kaushik. Shivam is an advocate practicing in New Delhi. His previous posts can be accessed here. Views expressed here are those of the author’s alone.
Schrodinger’s Claims of Mitsui Chemicals: Claims That Are There and Also Not There
By Shivam Kaushik
The Delhi High Court has recently handed down an interesting order in Mitsui Chemicals v. Controller of Patents. The order, though brief in size (12 pages), is a minefield both in facts and law as it packs three interesting elements. First, the treatment of claims during the national phase entry of a PCT application into India. Second, procedure for amendment of claims under Section 59 of the Patent Act, 1970 (Act). Third, patentability of a method of agriculture- the issue of Section 3(h).
Just like the order – I will try to keep the post short, for brevity is the soul of wit. Let’s dive in.
The Factual Matrix
Mitsui Chemicals (Appellant) filed a patent application in India through the PCT route in 2009. The application claimed priority from a Japanese application and the PCT claims was directed towards-
“1. A plant diseases and insect damage control composition comprising…
2. The plant disease and insect damage control composition according to claim 1, wherein at least one ”
At the time of national entry phase, the claims of the national phase applications were:
“1. A method of preventing plant disease and insect damage, the method comprising applying the composition comprising dinotefuran and penthiopyrad as active ingredients.
2. A method of preventing plant disease and insect damage, the method comprising contacting the composition comprising dinotefuran and penthiopyrad as active ingredients.”
The Patent Office issued the FER dated 31st May, 2013 objecting to the claims under Section 2(1)(j), 3(h) of the Patents Act, 1970 (Act). The FER further pointed out a mismatch between the PCT claims which were 8 in number, and the national phase application which had only 6 claims, and expressed a lack of clarity as to which claims were retained. Thus, the Controller further directed the Appellant to file a fresh translated copy of the PCT application. In response to the FER, the Appellant submitted an amended set of claims consisting of 10 claims directed towards-
“a method of preventing plant disease and insect damage, the method comprising…”
The 2nd Examination Report was issued on 26th February 2014 wherein the amended claims were still found to be running afoul Section 3(h). The Appellant was again directed to file the verified copy of the English translation of the international patent application.
The Appellant filed a response to the 2nd examination report along with a yet another amended set of claims. It is at this point that this set of claims were directed towards an “insecticidal composition”. Importantly, in the response, the Appellant claimed
“application as filed is the true English translation of the international application.”
Vide the impugned order, the Controller disallowed the amendment under Section 59. He took the view that under Section 59, the scope of amended claims should fall wholly under the scope of claims before the amendment. He observes that before the (2nd set of) amendments, the claims were directed towards a method, whereas the amendment sought to direct them towards a composition. And that this is unallowable under Section 59. After, disallowing the amendment, the Controller upheld the objection under Section 3(h) raised in the examination report and refused the application.
A quick recap:
| Claims Set no. | Stage | Nature of claims | Whether Form 13 (for amendment of the application) filed by the Appellant |
| 1 | PCT | Composition | N.A. |
| 2 | National Phase | Method | No |
| 3 | Claims in response to 1st FER | Method | No |
| 4 | Claims in response to 2nd FER | Composition | Yes |
Procedural Propriety
The refusal was assailed before the Delhi High Court and the Court found that the Controller has erred in the assessment of the claims. Justice Narula reasons that at the stage of national entry of a PCT application, amendments can be requested as per/under Section 57 by filing Form 13. However, if there is no Form 13, as per Section 138(4), the claims as filed in the international application have to be considered. The Court noted that since no Form 13 was filed by the Appellant at that stage, the PCT claims were the claims on record. The Court further goes on to observe that “modified claims were perhaps mistakenly filed by the Appellant” (without any submission to this effect from the Appellant).
The stand of the Patent Office before the DHC was that the Appellant had deleted composition claims (claims 1 and 2, thus bringing total claims from 8 to 6) at the national entry phase, and it could not reintroduce the same. Here, the Court outlines the vital distinction between deletion of claims and other forms of amendment. The judgment notes that Rule 20 of the Patent Rules, 2003 was amended in the year 2016 to allow ‘deletion of claims’ at the time of national phase entry; an option that was not available earlier. The 2019 Patent Office Manual allows deletion of claims without filing an application of amendment. However, since the amended Rule 20 was only made effective with effect from 16th May 2016, and the application in question was filed before the cut off date, the Controller had to consider the PCT claim- composition claims- as the original claim- and not the claims filed at the national phase entry- method claims. In the eyes of law, the method claims never existed.
The Court has now asked the Controller to reconsider the amendment on the touchstone of PCT claims.
Though the judgment scrupulously follows the letter of the law, it seems to ignore the maxim nullus commodum capere potest de injuria sua propria– no man shall take the advantage of his own wrong. It just does not seem equitable when-
- The Appellant did not file Form 13 when it was mandated by law;
- The Patent Office repeatedly asked for the duly verified translated copy of the international patent application;
- The Appellant informed the Patent Office that the application as filed is the true English translation of the PCT claims;
- The Appellant amended the claims twice and played along with method claims from 2010-
for the Appellant to come along and say that the Patent Office considered the wrong claims.
Section 3(h)
The order also sets aside the decision of the Controller on Section 3(h) on the ground of being devoid of reasoning and rightly so. However, there are certain important observations on the interpretation on Section 3(h). J. Narula expounds that while considering an invention under Section 3(h), it must be seen:
- whether the invention constitutes a method of agriculture or is a pure agricultural method; or
- whether it embodies an innovative technical solution to agricultural challenges or involves technical or scientific foundation addressing agricultural problems.
While the Court’s heart was at the right place- to save inventions that should not be hit by 3(h) being hit by 3(h)- the test sought to be spelled out does just the opposite. By introducing concepts like ‘innovation’ ‘technical’ ‘solution’ and ‘scientific foundation’, the order expands the scope of Section 3(h) and puts the bar for the inventor higher than was originally envisaged. Further, the test makes Section 3(h) vague without providing any guidance, for questions like what is innovative, technical, scientific foundation, and admits no definitive answer.
The criteria listed under Section 3 are not a one stop solution for the question of patentability, but rather it lists out the instances where an invention despite fulfilling the requirements of Section 2(1)(j), 2(1)(ja) is not patentable. It is hard to think of an invention overcoming the test of novelty, inventive step and industrial applicability and not be scientific, innovative or technical. The only thing that needs to be seen under Section 3(h) is whether the invention is a method of agriculture or not. Which is precisely what J. Ravi Krishan Kapur held in Decco Worldwide Harvest Holding v. The Controller of Patents and Designs. Interestingly, the Patent Office in the second examination report observes that the claims fall within Section 3(h) as the claimed method of preventing plant disease and insect damage is a regular practice followed as vital part of the agriculture process. Now, one might disagree with the conclusion of the Controller (which I do), the test applied by him is in consonance with the judgment in Decco Worldwide.
Though the order is short, it has many other interesting questions- Such as Controller’s view that Section 59 require that the amended claims should fall wholly under the scope of claims before the amendment – won’t it be hit by the Boehringer-Syngenta anomaly? In that case, a Division Bench of the Delhi High Court in the context of divisional applications has held that an invention does not solely reside in claims, and it can be found in specifications as well. It seems that taking a cue from the judgment, the Appellant has taken a stand in the written submission filed in response to the hearing notice that the claimed composition was present in the specifications. But since the Court has remanded the matter back for fresh consideration on Section 59, and Section 3(h), a few things must be left for tomorrow.
