IPAB rejects Monsanto plant patent

India’s Intellectual Property Appellate Board (IPAB) has affirmed that US agricultural company Monsanto cannot obtain a patent covering transgenic plants, two years after it was first rejected.

The application, called “a method of producing a transgenic plant with increased heat tolerance, salt tolerance or drug tolerance”, was dismissed for being obvious and because its claims covered improved versions of known substances.

Transgenic plants are genetically modified to function in a particular way.

In its bid to persuade the IPAB to reverse the controller general’s decision, Monsanto claimed that the prior art had been wrongly assessed and submitted various test results to refute the obviousness claim.

But in a ruling on July 5, the IPAB found that the patent’s claims covered a structure and function of cold shock protein that were “already known in the cited prior art” and were obvious to a person skilled in the transgenic plant industry.

The board was left to decide whether the patent was directed to an updated version of a known drug, a practice banned by section 3(d) of India’s Patent Act. The act became the subject of intense controversy earlier this year when the Indian Supreme Court used it to reject Novartis’s patent covering an amended version of its drug Glivec.

In the Monsanto case, the controller general had earlier found that the patented claims were a “mere application of already known cold shock protein in producing cold stress tolerant plant and tolerant to heat, salt and drought conditions”.

The IPAB said: “We ... confirm and concur with the findings.”

The case is thought to be the first time section 3(d) provision has been applied to plant patents.

Mohan Dewan, principal at law firm R.K Dewan & Co in Mumbai, said Monsanto should have opted for the Protection of Plant Variety and Farmers Right Act (PVFRA) – which covers plant varieties, farmers and breeders’ rights – rather than patent protection.

He said he was “angry” that Monsanto tried to patent its invention, because “it was a single gene modification” and therefore would have been simple to apply for PVFRA protection, which doesn’t demand evidence of an inventive step, as well as other requirements common in patent law.

The act typically provides for 15 years’ protection and requires renewal fees every five years, rather than annually.

“It’s a strong right,” Dewan said of the PVFRA.

Monsanto can no longer apply under the act, as it has disclosed the invention, Dewan said.

He added: “It is very important to know the laws of the country – you can’t apply US or UK law to Indian conditions. This is where these guys are slipping up, again and again and again. You have to have a local strategy.”

In May this year, the US Supreme Court decided unanimously in favour of Monsanto in its patent battle against farmer Vernon Bowman. The court found that Bowman had infringed Monsanto’s patents covering a genetically modified soybean – sold as Roundup Ready – when he replanted a crop of modified seeds in breach of his licensing agreement with Monsanto.