Monsanto V. Nuziveedu

Monsanto Technology LLC Thru the Authorised Representative Ms. Natalia Voruz & Others (Appellants) v. Nuziveedu Seeds LTD. Thru the Director & Others (Respondents)

Decided on January 8, 2019 in the Supreme Court of India.

Facts: Monsanto entered into a sublicense agreement dated 21.02.2004 with Nuziveedu for 10 years. The agreement was extended and was ultimately terminated by Monsanto on 14.11.2015 due to disputes regarding payment of licence fee. Monsanto had prescribed a higher fee in the agreement while the statutory license fee was lower. Nuziveedu paid the fee by the statute which led to the termination by Monsanto.

Monsanto filed for a temporary injunction under Order 39, Rule 1 and 2 of CPC to restrain the respondents from using their registered trade mark “BOLGARD” and “BOLGARD II” and from selling and/or using seeds/hybrid seeds bearing the patented technology.

There was a Nucleic acid Sequence (NAS) which is not a living organism but a chemical created in a laboratory. Its patent claims include the development of two genes designated Cry2Aa and Cry2Ab from Bacillus thuringiensis strain. Each gene sequence is known for its ability to synthesize proteins with pesticidal properties. The claim of NAS was amended from chemical to a gene.

Issue: Whether injunction can be granted and whether the plaintiffs’ patent had been infringed or not.

Held: Restored the Single Judge decision and left for it to decide the patent matter elaborately based on expert evidence.

Explanation: In response to the order of injunction respondents argued that their rights are protected under the Protection of Plant Varieties and Farmers’ Rights Act, 2001. Appellant’s patent was in violation of Section 3(j) of the Patents Act. Also Indian Seed Companies do not use the NAS in isolation nor the method of introducing the NAS into the plant described in the patent. The learned Single Judge observed that the suit required expert opinion for deciding injunction. And during the pendency of the suit, the parties shall remain bound by the sublicense agreement and licence fee governed by the laws in force. The learned Single Judge did not deal with or consider the counter claim for revocation of the patent as unpatentable. This was appealed to the Divisional Bench of High Court. It gave a summary judgement and upheld respondent’s contention with respect to patent exclusion under Section 3(j) of the Act. Thus the counter claim of the respondents which the learned Single Judge did not consider, succeeded.

Arguments of Appellant- The suit instituted was for injunction and lack of patentability was never an issue. Respondents argued lack of patentability to invalidate the primary issue relating to infringement which was neither argued nor adjudicated by the learned Single Judge.A summary judgement was not appropriate for this suit because the issue for existence of the patent and objection under Section 3(j) of the Act was profoundly mixed question of law and facts it required formal proof and expert evidence at the hearing of the suit. Patented NAS is not the creation of any biological process is entirely the creation of the human intervention. It is only plant varieties and seeds which are covered by the PPVFR Act.

Arguments of Respondents- The NAS gene once it gets incorporated into the plant genome becomes a part of the plant and is expressed in every part of the plant, thus they are essentially biological process claims S.3(j) of patent act. Conventional breeding methods are practiced by the respondents. The product claims even if it represents merely a “gene” not a chemical it cannot be patented. NAS was never used in isolationby the Indian Seed Companies nor did they use the methoddescribed in the patent of introducing the NAS into the plant. The Indian Seed companies simply crossed one of the plaintiffs’ plants with their proprietary Indian varieties which were suitable for cultivation in India, to develop a third/new cross­bred cotton variety which would have the Bt. trait from plaintiffs’ variety.This would resist Bollworm in their own developed varieties. Thus, there is no infringement of the patent.

The matter went to the Supreme Court. It held that the patent matters cannot be deposed by Divisional Bench on a summary basis and hence, its order is vacated. It can be disposed only by elaborate suit instituted under section 9 of CPC. The SC restored the Single Judge decision and left for it to decide the patent matter elaborately based on expert evidence.

Author: Dias Michelle Jerry, LLB student from, Rajiv Gandhi School of Intellectual Property Law, Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at swapnils@khuranaandkhurana.com

Leave a Reply

Archives

  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010