India: Patentability Of Genetically Modified Plant Breeds: The Monsanto Conclusion

Last Updated: 28 January 2019
Article by Dushyant Kishan Kaul

On January 08, 2019, the Supreme Court of India, in the matter of Monsanto Technology LLC v. Nuziveedu Seeds Ltd.1 held that genetically modified cotton seeds were patentable, and allowed U.S. company Monsanto to file their patent claims. The bench, comprising of Justice Rohinton Fali Nariman and Justice Navin Sinha, set aside the order of the Division Bench of the Delhi High Court, which had held such claims to be inapplicable in India. The Single Judge of the High Court had granted an interim injunction against any sale of Bt cotton seeds using the patent of Mahyco Monsanto Biotech, Monsanto's Indian arm.

On 21.2.2004, the plaintiffs had entered into a 10-year sub-license agreement with the defendants to develop "Genetically Modified Hybrid Cotton Planting Seeds" using the technology provided by the plaintiffs, after paying a license fee for the same. However, the agreement was terminated by the plaintiffs on 14.11.2015 due to disputes in lieu of the price control regime by the government, which the defendants asked the plaintiffs to adhere to.

The defendants in the suit argued that their rights were statutorily protected under the Protection of Plant Varieties and Farmers' Rights Act, 2001 (hereinafter referred to as 'the PPVFR Act'). It was argued that the patent was bad as unlike the "complex biological processes" adopted by the defendants, "claims 1-24 were "process claims" concerning genetic engineering or biotechnology method to insert "Nucleic Acid Sequence" (NAS) into a plant cell as in claim 25-27" were practiced in laboratory conditions. Basically, it was contended that NAS could not reproduce itself and could only impart insect resistance through its Bt trait when it was injected into another organism, thereby resulting in a process that was not biological, and hence patentable. Thus, infringement was denied in lieu of Section 3(j) (the Act) of the Patents Act, 1970 concerning plants and seeds with DNA sequences. In addition, revocation of the concerned patent was sought under Section 64 of the Act.

The Single Judge prima facie observed that the termination was not of any significant consequence as the plaintiffs had benefitted from the agreement all these years and hence held the action unjustifiable. The Division Bench accepted the counter-claim of the defendants and upheld their contention. Dismissing the appeal filed by the plaintiffs, the patent exclusion under Section 3(j) of the Act would stand and the plaintiffs could register their patent under the PPVFR Act. However, the suit continued with regard to damages and other reliefs.

In the Supreme Court, the advocates for the plaintiffs contended that the issue of patentability was never an issue in the suit and that the issue was solely about patent infringement. It was argued that the issue of patent exclusion was a mixed question of law and fact. The impugned order did not restrict itself to the "process claims" (25-27) and went further and held the 1-24 claims also, as bad in law, which was contended. Even the Single Judge had admitted that the issue of patentability required expert evidence and could be decided only when during the final trial of the suit and not summarily. It was also brought to the attention to the court that this patented technology had the highest number of seeds sold, and that the plaintiffs never intended to sue any Indian farmer individually. It was argued that the PPVFR Act and the Act were not complementary but were mutually exclusive in nature. Hence, it was contended that such a DNA construct/gene was not a plant variety as it did not come within the definition of "plant grouping", i.e. the lowest ranking of any plant – a species. Construing Section 2(za) read with Sections 14 and 15, it did not fall within the PPVFR Act. The advocates for the petitioners also went on to say that this required human intervention and was by no means purely a biological process.

The advocates appearing on behalf of the defendants contended that such genetically modified plant breeds could not be patented as the same would go against the scheme envisaged under the PPVFR Act. Such donor seeds had to be registered under this statute and were entitled to its constituent benefits listed under Section 26 as well. It was argued a proper construction of asserted claims and a determination of how the product infringes this claim, has to be proved in cases of patent infringement. In this case,  the plaintiffs argued that there was only an improvement of a prior, existing art form and this precluded the plaintiffs from claiming a patent for the same. It was further argued that even though it was a gene variety, the process made it an inherently transgenic plant. Further, this passes onto the progeny plants and infiltrates into every cell of the plant, even to the extent of going to the sub-cellular level. and that this irreversible biological process made the characteristics pivotal to the plant. Thus, an effective meaning of this process did not construe it to be a product claim. In addition, the insertion of NAS into the Indian varieties of plants developed an entirely new variety of plants. The use of such varieties under the PPVFR could not be undone by patenting the same. The lack of any inventive step and any industrial application was also argued for the applicability solely of the PPVFR Act and not the Patents Act, 1970. A conjoint reading of Section 2(j) and 3(c) of the Act did not allow biological processes to be patented. Moreover, no patent claims of this nature could deprive farmers from using this technology, as the powers under Section 48 of the Act could only be exercised against biotechnology companies seeking to exploit it. This would hold true, whether seen from the lens of the Patents Act or the PPVFR Act. As a last resort, it was prayed that the matter be heard fresh by the Division Bench only on the injunction matter.

After listening to the submissions of the counsels, the Supreme Court agreed with the decision of the Single Judge. It opined that owing to the complicated nature of this matter, the existing patent should not have been summarily adjudicated. The Division Bench, in their opinion, should have confined themselves to adjudging whether the injunction was valid or not. It held –

"The Division Bench ought not to have examined the counter claim itself usurping the jurisdiction of the Single Judge to decide unpatentability of the process claims 1-24 also in the summary manner done. Summary adjudication of a technically complex suit requiring expert evidence also, at the stage of injunction in the manner done, was certainly neither desirable or permissible in the law. The suit involved complicated mixed questions of law and facts with regard to patentability and exclusion of patent which could be examined in the suit on basis of evidence."

The apex court then went onto examine Section 64 of the Act, dealing with revocation of patents. The same, in their opinion, necessarily presupposed valid consideration of all claims and consequent counter-claims. The bench stated that Section 9 and 10 of the Civil Procedure Code, 1908 dealt with the procedure of such suits all the way till the decree is passed. The court held that only in certain situations could a suit be tried summarily, and that the Division Bench erred in disposing of the suit without hearing all the arguments and assessing all the evidences before it.Referring to Alka Gupta v. Narender Kumar Gupta2, it was seen that when the case is being tried on preliminary issues, an inquiry into other matters in the case could not be done without a trial. It said that the injunction granted by the Single Judge was valid and that no further interference was needed. Consequently, it set aside the order of the Division Bench and remanded the matter to the Single Judge for early disposal of the suit.

The Supreme Court of India has been, and rightfully so, strict with respect to the procedural aspects of intellectual property disputes which come up in appeal. Very often, High Courts across the country overstep their mandate and decide complex matters of law while deciding on a particular point. This has sought to be prevented by the Court, while allowing the lower courts to hear matters of such importance. Hence, the merits of the case were heard and the injunction was restored. Additionally, the Single Judge was allowed to dispose of the case after hearing both sides on merits. Purely from a legal standpoint as well, the courts have been encouraging towards newly developing patentable technologies in the field of agriculture. While some argue that this affects the rights of farmers, the same cannot be at the cost of invention. Hence, this judgment is important to set the tone and encourage such research endeavors for future progress.


1 2019 SCC OnLine SC 25

2 (2010) 10 SCC 141

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions