India: Patentability of biotechnology products – Managing Intellectual Property (subscription)

In a landmark ruling on March 28 2017, the Delhi High Court, in Monsanto Technology LLC & Ors v Nuziveedu Seeds Limited & Ors, gave a prima facie opinion on the patentability and enforceability of man-made DNA sequences. Although only an order at the interim stage, this is the first time an Indian court has ruled on this issue and the order itself is a lengthy one. The Delhi High Court's interim order also deals with other issues of contract law and termination and despite finding in favour of Monsanto, inter alia, on patent issues, the Court ruled against Monsanto on certain contract-related issues. The infringement suit initiated by Monsanto, covering patents, trade marks and common law rights, was against a former sub-licensee of Monsanto's Bollgard II technology.

Although Indian law prevents the patenting of plants, parts thereof and essentially biological processes for the production or propagation of plants, the Court held that the legislative intent was only to prevent patents being granted on what was naturally occurring. Thus, the Delhi High Court ruled that products of biotechnological processes such as man-made DNA sequences meant for use in plants are still patentable subject matter in India.

The Delhi High Court's interim order also covers an issue of global importance the interplay between patent law and plant variety protection law. The Court has held that the protection granted to breeders under plant varieties law, sometimes called breeders' rights or researchers' rights, does not extend to using patented man-made DNA sequences without the patentee's consent. The High Court has further given a prima facie view that developing and commercialising new varieties of plants incorporating such patented DNA sequences would amount to "use" of the patented invention and thus, where done without the patentee's consent, a valid cause of action arises for patent infringement.

This interim order has already been challenged by both sides before a division (two-judge) bench of the Delhi High Court and this development will have to be followed with keen interest.

Lakshmi Kumaran & Sridharan B6/10 Safdarjung Enclave New Delhi 110029, India Tel: +91 11 41299800 Fax:91 11 41299899 vlakshmi@lakshmisri.com http://www.lslaw.in

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India: Patentability of biotechnology products - Managing Intellectual Property (subscription)