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India- Permissibility of claim amendments in the context of methods of agriculture or horticulture

The Delhi High Court recently set aside an order issued by the Assistant Controller of Patents (the “Respondent”) against Mitsui Chemicals Inc (the “Appellant”) refusing their Patent Application.

Background: The Respondent refused the Patent Application No. 3877/DELNP/2009 citing non-patentability under Section 3(h) of the Patents Act, 1970 (as amended) (the “Act”) (which stipulates that inventions in relation to methods of agriculture or horticulture are not patentable). During the course of prosecution of the said application, the Respondent also disallowed the claim amendments from ‘method claims’ to ‘composition claims’.

Facts: The Appellant filed a patent application in India through the PCT route, in 2009, with six claims related to “A method of preventing plant disease and insect damage…..”. The original PCT claims were eight in number and claims 1 and 2 were related to “A plant disease and insect damage control composition…”. During the prosecution stage of the application, the Appellant filed amended claims with formal request on Form-13 to overcome an objection under Section 3(h) of the Act which had been raised in the Examination report. The amended claims related to “An insecticidal composition….”. The Respondent disallowed the said amendment, for being out of the scope of original claims as filed, and maintained the objection under Section 3(h) of the Act.

Submissions by the Appellant:

The Appellant argued that the original claims (1 and 2) in the PCT application were already directed towards an “insecticidal composition.” There was no formal request for amending the claims when filing the national phase application in India. They also emphasized that the specification and claims from the international application become the complete specification of the national designation. Accordingly, the amended claims fall within the scope of the original PCT claims (1 and 2) and do not violate the provisions of the Act.

Submissions by the Respondent:

The Respondent highlighted that the Appellant’s initial filing in India did not include claims for the “insecticidal composition.” Instead, the focus was on a “method of treatment of plants.” The Respondent pointed out that the Appellant themselves deleted claims 1 and 2 while filing the application in India and cited Rule 20 of the Patent Rules, 2003 (as amended) (which clearly allows applicants to delete claims from their PCT application during the national phase).


The Court agreed with the Appellant and stated that during the national phase of a PCT application, amendments can be requested.

With respect to the Respondent’s objection under Section 3(h) of the Act, the Court observed that the order lacked any substantive analysis. The Court emphasized the necessity for a more nuanced and detailed analysis of the claimed invention. Further, the Court cautioned that this analysis must scrutinize whether it genuinely constitutes a ‘method of agriculture‘ or embodies an innovative technical solution to agricultural challenges that might not fall within the exclusions of Section 3(h) of the Act. Crucial to this assessment is a clear distinction between purely agricultural methods and those with technical or scientific foundation addressing agricultural problems.