On July 5, 2013, the Indian Intellectual Property Appellate Board affirmed a decision of the national patent office to deny Monsanto Company’s application for a patent covering “a method of producing a transgenic plant, with increasing heat tolerance, salt tolerance or drought tolerance.” Monsanto Technology, LLC v. The Controller of Patents & Designs, Trademark and Geographical Indications (India IP App. Bd. Jul. 5, 2013).
THE CLAIMED INVENTION. Claim 1 in the Monsanto application–the only independent claim in the application–was directed to a method of producing a transgenic plant comprising the following steps:
a) inserting into the genome of plant cells a recombinant DNA molecule comprising a DNA encoding a cold shock protein, wherein said DNA encoding said cold shock protein is operably linked to a promoter and operably linked to a 3′ transcription termination DNA polynucleotide;
(b) obtaining transformed plant cell containing said recombinant DNA;
(c) regenerating plants from said plant cells; and
(d) selecting a plant for increased heat tolerance, salt tolerance, or drought tolerance.
THE PATENT OFFICE’S DENIAL OF THE APPLICATION. The patent office refused Monsanto’s application on the grounds that the claimed invention lacked an inventive step in view of several items of prior art, including an article in the Journal of Bacteriology and two prior patent applications. According to the patent office, the structure and function of the “cold shock protein” was already known in cited prior art and was obvious to a person skilled in the relevant art. The patent office further determined that the invention claimed by Monsanto was the mere application of an already known cold shock protein in producing cold stress tolerant plant and tolerant to heat, salt and drought conditions. Moreover, the office found that the claims included the “essential biological process of regeneration and selection, which includes growing of [a] plant in [a] specific stress condition.”
NO CLAIM TO AN ESSENTIALLY BIOLOGICAL PROCESS. In its July 5 opinion, the Appellate Board disagreed with the determination that the application disclosed an “essentially biological process” that was statutorily excluded from patent eligibility. The Board reasoned that the method claimed by Monsanto–
… is a method that includes an act of human intervention on a plant cell and producing in that plant cell some change. Therefore the [Controller of Patents] erred in finding this method as essentially biological process and excluded under section 3(j) [of the Patents Act 1970]. We set aside his findings to that extent.
OBVIOUSNESS AND LACK OF NOVELTY. Monsanto’s victory on the exclusion issue, however, was insufficient to reverse the office action denying its application. The Board wrote that it “confirm[ed] and concur[red] with the findings” of the patent office with regard to the lack of novelty and obviousness of the claimed invention.
By: Shawn N. Sullivan