Nuziveedu Seeds Ltd & Ors v. Monsanto Technology Llc & Ors

judgment. Prior Legislative history

¶68Section 2 (q) and Section 5 of the Patents Act, 1970, before amendment to the Act permitted only process patents and did not allow products of chemical processes to be

patented. Section 3 (i)which existed under the original Patents Act excluded from patent protection: ―the following are not inventions within the meaning of this Act….i) any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.‖

¶69Section 5 of the Patents Act was amended by the Patents (Amendments) Act, 2002, inserted an explanation, stating that "chemical processes" include biochemical, biotechnical and micro-biological processes" to Section 5(2)(b). After amendment, the provision read as follows: "Section 5 Inventions where only methods or processes of manufacture patentable-In the case of inventions-

(a)…..

(b) relating to substances prepared or produced by chemical process (including alloys, optical glass, semi-conductors and inter-metallic compounds. no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable. Explanation — For the purposes of this section, "chemical processes" include biochemical, biotechnical and micro-biological processes"

¶70The 2005 Amendment repealed Section 5 altogether. In isolation, this would have meant that the extended definition of "chemical process"- covering "biochemical, biotechnical and micro-biological processes‖ could be patented. However, the insertion of Section 3 (j) which excluded "plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals" and the simultaneous enactment of the PV Act meant that facially, the Parliament intended not to afford intellectual property protection in the form of patents, to processes and products that would otherwise be called inventions and be entitled to patents. Application of principles of statutory interpretation

¶71It is evident that Parliamentary intent was to exclude from patenting plants, seeds or part thereof excluding micro-organisms "but including…essential biological

processes". This meant that process or products, that otherwise meet the test of patentability (i.e. novelty, inventive step and industrial application, are nevertheless as a matter of public policy, ineligible for patent protection. The mechanism adopted by Parliament was to spell out what was not patentable i.e., plants, seeds, plant varieties, - whole or part and then exclude micro-organisms, but clarify that the exclusion would not apply to "seeds, varieties and species and essentially biological processes for production or propagation of plants and animals". Therefore, the principal provision (Section 3) provides for non-patentability of matters spelt out – i.e. i. plants, animals in whole or part thereof; ii. excluding micro-organisms iii. but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals

¶72In this context, this court recollects that the expression "includes" is used as a legislative device to enlarge the meaning of words or phrases "occurring in the body of the statute; and, when it is so used, these words or phrases must be construed as comprehending, not only such things as they signify according to their natural import, but also those things which the interpretation clause declares that they shall include."(Ref. Dilworth v. Stamps Commissioners (1899) A.C. 99) which the Supreme Court of India consistently followed.8

¶73It would also be useful to notice the judgment of the Supreme Court in Sardar Gurmej Singh v. SardarPratap Singh Kairon AIR 1960 S.C. 122 where the question involved was the true interpretation of Section 123 (7) of the Representation of Peoples Act, 1951 which read as follows: "Section. 123. Corrupt practices. - The following shall be deemed to be

8Commissioner of Income Tax Andhra Pradesh v M/s Taj Mahal Hotel Secunderabad

(1971) 3 SCC 550; State of Bombay v The Hospital Mazdoor Sabha AIR 1960 SC 610; Forest Range Officer &Ors v P. Mohammed AH & Ors AIR 1994 SC 120

corrupt practices for the purposes of this Act :- **********

*********

(7) The obtaining or procuring or abetting to obtain or procure by a candidate or his agent or, by any other person, any assistance (other than the giving of vote) for the furtherance of the prospects of the candidate's election, from any person in the service of the Government and belonging to any of the following classes, namely : **********

*********

(f) revenue officers including village accountants, such as, patwaris, lekhpals, talatis, karnams and the like but excluding other village officers."

¶74The court held in the judgment that: "…It is an elementary rule that construction of a section is to be made of all the parts together and not of one part only by itself, and that phrases are to be construed according to the rules of grammar. So construed the meaning of the clause is fairly clear. The genus is the "revenue officer," and the "including" and "excluding" clauses connected by the conjunction "but" show that the village accountants are included in the group of revenue officers, but the other village officers are excluded therefrom. If X includes A but excludes B, it may simply mean that X takes in A but ejects B. It is not necessary in this case to consider whether the inclusive definition enlarges the meaning of the words "revenue officers", or makes them explicit and clear, viz., that the enumerated officers are within the fold of "revenue officers"; for in either construction the village accountants would be revenue officers. But we cannot accept the argument that what is excluded was not part of that from which it is excluded, and that lambardars were not revenue officers and yet had to be excluded by way of abundant caution. If so, it follows that the village officers, who included lambardars, were excluded from the group of revenue officers, with the result that they are freed from the disqualification imposed by the provisions of the said clause. But it is said that this construction would make the words "revenue officers" and the words "excluding other village officers" unnecessary, for, the same result could be achieved by enacting simply "village accountants, such as, patwaris, lekhpals, talatis, karnams and the like" This argument, if we may say so, overlooks the difference between the terms "revenue officers" and "village officers". " Revenue officers", as we have pointed out, is a more comprehensive term and takes in all officers who are employed in the revenue business, whereas the jurisdiction of the village officers is confined to their respective villages. Village officers do not exhaust the content of revenue officers, and even after their exclusion there will be many revenue officers at higher levels who would be

governed by cl. (f). If this be the construction, every word used in the clause is given a meaning and no words become a surplusage."

¶75In Narpatchand A. Bhandari v ShantilalMoolshankarJani1993 (3) SCC 351 the issue was whether expression "landlord" under Section 13 (1) includes usufructuary mortgagee where tenanted premises were subject of usufructuary mortgage. The extended definition of "landlord" according to Explanation (b) to Section 13 (2) was that it "shall not include a rent-farmer or rent-collector or estate-manager". Section 5 (3), on the other hand, gave an inclusive extended definition: ""landlord" means any person who is for the time being, receiving, or entitled to receive, rent in respect of any premises whether on his own account or on account, or on behalf, or for the benefit of any other person or as a trustee, guardian, or receiver for any other person or who would so receive the rent or be entitled to receive the rent if the premises were let to a tenant, and includes any person not being a tenant who from time to time derives title..". The court held that a usufructary mortgagee is a landlord, entitled to maintain eviction proceedings.

¶76A plain textual interpretation of Section 3 (j) of the Patents Act therefore, is that plants, animals "whole or parts thereof" are excluded from patentability, as are "seeds, varieties and species and essentially biological processes for production or propagation of plants and animals". However, microorganisms are not excluded; whole or parts thereof can be patented, provided other conditions of the Patent Act are fulfilled. Significantly, the expression "variety"(undefined under the Patents Act) is defined under the PV Act by Section 2 (za) to exclude microorganisms("variety means a plant grouping except a microorganism…"). The exclusion of microorganisms from the PV Act meant that they are not capable of registration as any "variety" under that Act; their exclusion from Section 3 (j) means that the Patents Act enables patent protection to them.

¶77"Micro-organism" has not been defined either under the Patents Act, or under the PV Act. The Cambridge Dictionary (online) defines a micro-organism as "A living thing that on its own is too small to be seen without a microscope‖, examples: bacteria, germs, viruses9 .

9Meaning of microorganism (Cambridge Dictionary, available at: http://dictionary.cambridge.org/dictionary/english/microorganism) (last accessed on 05.10.2017)

¶78The Oxford dictionaries (online) defines it as "A microscopic organism, especially a bacterium, virus, or fungus."10 The Law Dictionary (Featuring Black"s Law Dictionary Free Online Legal Dictionary 2nd Ed.) defines micro-organism as "Visible under a microscope, this type of living organism is too small to be seen with naked eye. Also known as microbe."11

¶79As the precise definition of a microorganism has not been enacted by Parliament, the ordinary meaning of that expression, gleaned from dictionaries would apply. The discussion about the subject patent discloses that the nucleic acid sequence which is the invention in question (the Cry2AB gene) has no existence of its own; it is of use, after introgression at a particular place, none else. Even thereafter, the seed material has to undergo further steps of hybridization to suit local conditions. Therefore, these products are not "microorganisms" and consequently excluded from the exclusion clause in Section 3 (j).

¶80There is another obstacle in Monsanto"s submissions regarding patentability of its subject invention as a micro-organism. Arguendo the subject matter of the patent in question is a micro-organism, patenting micro-organisms in India is contingent upon regulations for the deposit of micro-organisms, in recognized International Depository Authorities (IDA) in terms of Article-7 of the Budapest Treaty12 as well as the accessibility of the concerned microorganism from the depositories. In terms of Section 10(4) (d) (ii) of the Patents Act, if the micro-organism is not fully described and is

10Meaning of microorganism (Cambridge Dictionary, available at: https://en.oxforddictionaries.com/definition/microorganism) (last accessed on 05.10.2017) 11Meaning of microorganism (The Law Dictionary, Featuring Black"s Law Dictionary Free Online Legal Dictionary 2nd Ed., available at: http://thelawdictionary.org/microorganism/)(last accessed on 05.10.2017)

12Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (adopted in 1977, amended in 1980), available at: http://www.wipo.int/treaties/en/registration/budapest/ (last accessed on 03.03.2018)

unavailable to the public it has to be deposited before the IDA under the Budapest Treaty as a pre-condition for filing of application in India. All the characteristics of the micro-organisms and details of depositary institutions along with accession number are to be stated in description for its correct identification.

¶81Section 10 (4) of the Patents Act reads as follows: ―Section 10(4)..

(4) Every complete specification shall-

(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed;

(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and

(c)end with a claim or claims defining the scope of the invention for which protection is claimed;

(d) be accompanied by an abstract to provide technical information on the invention: Provided that-

(i) the Controller may amend the abstract for providing better information to third parties; and

(ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing 42 [the material to an international depository authority under the Budapest Treaty] and by fulfilling the following conditions, namely:-

(A)the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period;]

(B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;

(C) access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority;

(D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.‖

¶82Therefore, by Section 10 (4) of the Patents Act, if the patent applicant describes a biological material, it is to be deposited in terms of the Budapest Treaty (Article 7) with an IDA before the application is made. This procedure is mandatory even in other systems. Commenting on the obligatory nature of this condition, the US Federal Circuit Court of Appeals stated, in Ajinomoto Co. Inc. v. Archer Daniels Midland Co. 228 (2000)

F.3d 1330, that when an invention relates to a new biological material, which may not be reproducible even when detailed procedures and a complete taxonomic description are included in the specification, then, "It is then a condition of the patent grant that physical samples of such materials be deposited and made available to the public…"

¶83Monsanto nowhere states that in terms of Section 10(4), the biological material was deposited with an IDA, as a pre-condition for its application under the Patents Act. Monsanto has allegedly failed to:

"(a) disclose the source and, origin as well as accession details, of B. thuringens is from which Cry2A gene was isolated; (b) disclose source and origin as well as accession details of Agrobacterium tumefaciens from which nopalinesynthease gene, octopine synthase gene were isolated and used; (c) disclose source and origin as well accession details of potato and tomato from which 3' end of the protease inhibitor I or II genes were isolated; disclose source and origin as well as accession details of a plant, particularly maize plant from which the, PTPs have been isolated; disclose source and geographical origin as well as accession details, of Arabidopsis thaliana from which PTPs has been isolated; disclose source and geographical origin along with, the accession/variety details of maize, cotton, tobacco plants being used in the examples; disclose source, geographical origin as well as the accession/variety details-from; which the FMV35S promoter has been isolated; (e), disclose details of petunia heat shock protein (HSP70), maize heat shock protein (HSP70) is absent; and disclose the source, geographical origin and accession details of ... (ineligible) phosphatransferase gene (NPTII)."

¶84Section 3(j) of the Patents Act, excludes, inter alia, "essentially biological processes" from patentibility in pursuance of Article 27(3)(b) of the TRIPS Agreement, however the phrase has not been defined in the Patents Act, neither in any other statute. Article 27(3)(b) of the TRIPS Agreement reads as follows: "3. Members may also exclude from patentability:

(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;

(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions

of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.‖

¶85The International Convention for the Protection of New Varieties of Plants (UPOV 1991) was preceded by conventions of 1961 and 1978, which had created international frameworks for signatory nations to afford intellectual property rights to innovations in plant varieties. India is not a signatory to UPOV and has, instead, chosen to exclude from patentability certain subject matter in relation to plants, or parts thereof, seeds and essential biological processes but not including microorganisms. This, instead, in accord with its TRIPS commitment to "provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof‖ has enacted the PV Act. The relevant provisions from other international covenants/instruments are Articles 2(2), 4(1) and 4(3) of the Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the Legal Protection of biotechnological inventions (hereinafter, the "Biotech Directive") and Article 53(b) of the European Patent Convention ("EPC"). Relevant provisions of the Biotech Directive are as follows:  ―Art. 2(2): A process for the production of plants or animals is essentially biological if it consists entirely of natural phenomena such as crossing or selection.  Art. 4(1): The following shall not be patentable: (…)

(b) essentially biological processes for the production of plants or animals.  Art. 4(3): Paragraph 1(b) shall be without prejudice to the patentability of inventions which concern a microbiological or other technical process or a product obtained by means of such a process.‖

¶86The Article 53 (b) of the European Patent Convention pertinently states that: ―European patents shall not be granted in respect of:

(a) […];

(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof; […]‖

**************

*********** Rule 26(5) EPC: ―A process for the production of plants or animals is essentially biological if it consists entirely of natural phenomena such as crossing or selection.‖

Rule 26(5) EPC is identical to Article 2(2) of the Biotech Directive.

¶87To expand on the definition of "essentially biological process", the Enlarged Board of Appeals, in its decision of Plant Bioscience Limited v. Syngenta Participations AG GroupeLimagrain Holding [G2/07] held in its ruling that: "…the conclusion to be drawn is that a process for the production of plants which is based on the sexual crossing of whole genomes and on the subsequent selection of plants, in which human intervention, including the provision of a technical means, serves to enable or assist the performance of the process steps, remains excluded from patentability as being essentially biological within the meaning of Article 53(b) EPC. However, if a process of sexual crossing and selection includes within it an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then that process leaves the realm of the plant breeding, which the legislator wanted to exclude from patentability.‖13(emphasis added)

¶88The decisions of the European Patent Office in State of Israel-Ministry of Agriculture v. Unilever N.V. [G 0001/08] (the "Tomato case") and Plant Bioscience Limited v. Syngenta Participations AG Groupe Limagrain Holding [G 0002/07] ( the "Broccoli case") are also relevant in this context. In both the decisions the Enlarged Board of Appeal the following was held:

¶1A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being ―essentially biological" within the meaning of Article 53(b)EPC.

¶2Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.

¶3If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen

13Plant Bioscience Limited v. Syngenta Participations AG, Groupe Limagrain Holding G 0002/07, (available at: http://www.epo.org/law-practice/case-law-appeals/pdf/g070002ex1.pdf) (last accessed on

14.02.2018)

for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.

¶4In the context of examining whether such a process is excluded from patentability as being "essentially biological ―within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.

In determining the meaning of Rule 26(5) of the EPC, the Enlarged Board held as follows: "…On the other hand, it is hardly conceivable that the terms "crossing" and "selection" in Rule 26(5) EPC are intended not to refer to plant breeding at all but only to purely natural events taking place without human control. The expression "processes for the production of plants" (German version: "VerfahrenzurZüchtung von Pflanzen", French version: "procédés ... d'obtention de végétaux") in Article 53(b) EPC implies at least some kind of human intervention. Furthermore, it would have the awkward consequence of restricting the scope of the exclusion to subject-matter which, owing to its complete lack of technical character, does not qualify as an invention anyway, so that there would be no need to exclude it from patentability by an explicit provision. The referring Board therefore takes the view that the mere fact that a claimed process requires some kind of human intervention is not, even in the light of Rule 26(5) EPC, sufficient to take the process outside the patentability exclusion. The crucial issue, according to the referring Board, is rather to determine what kind of human intervention is required." *** "The standard definition of the term "essentially biological process" within the meaning of Article 53(b) EPC 1973 was developed in decision T 320/87 (supra, Headnote 1 and points 6 to 9 of the Reasons) and was confirmed in later decisions cited in the referring decision T 83/05, in particular decision T 356/93 (supra).

In decision T 320/87 the Board held: "6. ... whether or not a (non-microbiological) process is to be considered as "essentially biological" within the meaning of Article 53(b) EPC has to be judged on the basis of the essence of the invention taking into account the totality of human intervention and its impact on the result achieved. It is the opinion of the Board that the necessity for human intervention alone is not yet a sufficient criterion for its not being "essentially biological". Human interference may only mean that the process is not a "purely biological" process, without contributing anything beyond a trivial level. It is further not a matter simply of whether such intervention is of a

quantitative or qualitative character.

¶7...

¶8In analysing the claimed processes, it appears that their essence lies in the particular manner of the combination of specific steps ... The totality and the sequence of the specified operations do neither occur in nature nor correspond to the classical breeders' processes...

¶9In decision T 356/93, cited by the referring Board in the present context, that Board undertook to explore more comprehensively the legislator's considerations when drafting the provision. After furthermore considering the findings in T 320/87 cited above, the Board then concluded that: ……."28. ... a process for the production of plants comprising at least one essential technical step, which cannot be carried out without human intervention and which has a decisive impact on the final result (see points 25 to 27 supra), does not fall under the exceptions to patentability under Article 53(b), first half-sentence, EPC.""

¶89In Plant Genetic Systems v Greenpeace (T0356/93, decided on 21.02.1995) the European Enlarged Board of Appeals held that: ―if the expression "microbiological process" was broadly interpreted to cover any product of a process conducted in the laboratory at microscopic level and the first plant directly obtained thereby was considered to be the product of a microbiological process, it could not be said that subsequent generations of plants (e.g. the 10th generation of a herbicide-resistant plant) were something that with any reason could be regarded as the product of a microbiological process. In fact, the latter were the product of an essentially biological process, because they were spontaneously generated, and no intervening human process was required for their generation. Accordingly, such processes of generation and the resulting plants were not patentable under Article 53(b) EPC.‖

¶90Earlier, in Lubrizol/Hybrid Plants [1990] EPOR 173, the Technical Board of Appeal considered the meaning of "essentially biological" and stated: "Fundamental alteration of the character of a known process for the production of plants is required before the applicant can avoid the rigors of being termed ―essentially biological‖. The claimed processes must represent an essential modification of known biological and classical breeders processes."

¶91The above rulings instruct that "essentially biological processes" has to be interpreted in a manner such that, human intervention, does not take it out of the exclusionary sweep of Section 3(j), unless such intervention ipso facto, plays an

intrinsic role in the insertion of the DNA, i.e. that it results in fundamental alteration of the character of a known process of production of plants or seeds.

¶92The Indian Guidelines for Examination of Biotechnology Applications for Patents14published by the Office of the Controller General of Patents, Designs and Trade Marks does broadly indicate what is "essentially biological process"; it may not be conclusive; yet throws light on the same through the following illustrative example: "ILLUSTRATIVE EXAMPLE 2: Claim: A method of producing at least one of substantially pure hybrid seeds, plants and crops, comprising the steps of (i) producing a male parent which is male fertile, (ii) breeding the male parent with a female parent which is substantially male sterile, and (iii) harvesting seeds from the female parent which contain pure hybrid seeds. Analysis: The claimed method involves the step of cross breeding for producing pure hybrid seeds, plants and crops. Thus, it is an essentially biological process and not allowable under Section 3 (j) of the Act."

93.

From the varied judicial interpretation of what constitutes an ―essentially biological process‖, the primary criteria that emerge for qualifying as an essentially biological process and thereby, to be excluded from patentability, are as follows:  The process for the production of the plants/variety should based on the sexual crossing of whole genomes.  Further, in the subsequent selection of the plants/variety, the degree of human intervention (even when it is of a technical nature) should be enabling and in the nature of assistance to the performance of the process steps. Merely because a step of human technical intervention exists does not rule out the disqualification as an "essentially biological process", such intervention needs to amount to a significant alteration/introduction in the genetic composition.

¶94As far as the cases cited by Monsanto are concerned, in Pioneer Hi-Bred, (supra) the Supreme Court of Canada held that the Commissioner correctly rejected a patent application claiming a new variety of soybean resulting from artificial cross-breeding and

14Guidelines for Examination of Biotechnology Applications for Patent, Office of the Controller General of Patents, Designs and Trade Marks, March 2013, available at: http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_38_1_4-biotech-guidelines.pdf(last accessed on 03.03.2017)

selection, because it could not be sufficiently disclosed by depositing a seed the reproduction cycle but not intervention which alters the actual rules of reproduction, which continues to obey the laws of nature. In Percy Schmeiser (supra) Monsanto learned that Schmeiser was growing a worm resistant crop for which it held a patent. It asked him to pay license fee and sign a license to its patents. He declined, saying that the contamination was accidental and that he owned the seed he harvested, and he could use the harvested seed as he wished because it was his physical property. Monsanto then filed an infringement action. Canadian law does not mention grant of "farmer"s rights". The Canadian Supreme Court held that the farmer"s right to save and replant seeds is simply the right to use his or her property as he or she wishes. The right to use the seeds is subject to the same legal restrictions on use as rights that apply in any case of ownership of property, including restrictions arising from patents in particular. It was held that: "Thus a farmer whose field contains seed or plants originating from seed spilled into them, or blown as seed, in swaths from a neighbour's land or even growing from germination by pollen carried into his field from elsewhere by insects, birds, or by the wind, may own the seed or plants on his land even if he did not set about to plant them. He does not, however, own the right to the use of the patented gene, or of the seed or plant containing the patented gene or cell."

¶95The dissenting four judges (out of the five judges who constituted the majority) followed the majority in Harvard College v Canada (Oncomouse) case and held that though a proprietor can patent products and processes, patent of higher forms of life such as the whole plant itself is impermissible. It was held that "the plant cell claim cannot extend past the point where the genetically modified cell begins to multiply and differentiate into plant tissues, at which point the claim would be for every cell in the plant".

¶96A crucial difference between Canadian law and Indian law is that there is no "farmer"s right" carving out an exception of the kind, available in the PV Act in India.

¶97A recent significant development was, the decision of the European Patent Office, to amend the relevant regulations in order to exclude from patentability plants and

animals exclusively obtained by an essentially biological breeding process15; this proposal took into account a notice16 of the European Commission from November 2016, where the Commission clarified its position that it was the intention of the European legislator to exclude not only processes but also products obtained by these processes. These new processes came into effect on 1 July 2017. The decision is in the wake of the two rulings in Broccoli (G2/13) and Tomato II (G2/12) of the Enlarged Board of Appeal at the European Patent Office (EPO) in March 2015, where the Board decided that, claims to products derived from an essentially biological process can be allowed as long as the other criteria for patentability are fulfilled, even if the process used to obtain the products is essentially biological and thus not patentable. Rules 27 and 28 of the European Patent Convention(EPC) have since been amended to that effect to state that, ―under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of essentially biological process‖. Most notably, Rule 28 has been amended to add an additional paragraph (2): "(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process."

¶98Thus, the exclusion of transgenic plants and seeds propagated after hybridization from patentability under section 3(j) of the Patents Act, 1970, is congruent with the amendment of Article 53(b) of the EPC, wherein, patents cannot be granted in respect of plants or animals exclusively obtained by means of essentially biological process. The conclusion that the court draws therefore, is that transgenic plants with the integrated Bt. Trait, produced by hybridization (that qualifies as an "essentially biological process" as concluded above) are excluded from patentability within the purview of section 3(j), and Monsanto cannot assert patent rights over the gene that has thus been integrated into the generations of transgenic plants.

¶99The other reason why this court concludes that Section 3 (j) prohibits grant of

15WPO clarifies practice in the area of plant and animal patents, 29 June 2017, available at: https://www.epo.org/news-issues/news/2017/20170629.html(last accessed on 03.03.2017) 16Commission Notice on certain articles of Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions(available at: https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:52016XC1108(01)&from=EN )(last accessed on 03.03.2017)

patents to Bt. trait induced varieties is that they are parts of "seed". The trait, by itself has no intrinsic worth; it is meant to be implanted or introgressed and later hybridized into a variety to be further hybridized through backcrossing17and cross breeding with other existing varieties to produce seeds that are ultimately used. Without introgression, they are inert and inanimate. Their utility is when they are introduced at a place (in the DNA sequence of the seed)- the event which Monsanto claims proprietary rights over. Their function is to be part of a seed. Furthermore, the process of hybridization undertaken by the Nuziveedu group and the Bt. Cotton hybrid plants as well as seeds produced thereafter are squarely exempt under Section 3(j) of the Patents Act; these seeds are sold to the farmers and other retailers.

¶100The future propagation of the transgenic plants (after introgression and hybridization) and the subsequent transfer of the Bt. Trait in such plants and consequently, the transgenic seeds, will be a process of nature, and no step of human intervention can impede such transfer of the sequence. Therefore, it would be contrary to law and Parliamentary intent to enable Monsanto to have patent rights over the nucleic sequence once it is been duly introgressed and hybridized into the transgenic plants. Unlike other products, the process of integration and further hybridization sets into motion a chain of events, which is part of nature; the seeds and propogating material, including future generation of seeds would contain the DNA sequence with the particular strand or trait. In other words, the moment the DNA containing the nucleotide sequence (subject patent) is hybridized to produce the transgenic seeds/plants; the seeds/plants fall within the purview of the PV Act, and, above, the process of creation of such seeds/plants are also excluded from patentability as they squarely fall within the meaning of an "essentially biological process" that is exempted from patentability within the meaning of section 3(j), as well. For these reasons, it is held that the subject matter, the concerned nucleotide sequence over which Monsanto has patent rights and the process is unpatentable by reason of Section 3 (j) of the Patents Act. Scheme under the PV Act-is Monsanto entitled to intellectual property protection under

17"Backcrossing" is the process of cross-breeding a hybrid plant or seed with one of its parents or with an individual genetically identical to such parents (Ref. The Free Dictionary, available at:https://www.thefreedictionary.com/backcross) (last accessed on 03.03.2017)

the enactment

¶101The PV Act was passed by Parliament in August, 2001; it received Presidential Assent on 30th October 2001. This is a pioneering legislation that recognizes farmers" contribution in conserving biodiversity and developing new plant varieties. India has consciously opted for a sui generis system of protection of plant varieties to recognize farmers" age-old contribution in agriculture and agro-biodiversity. The four major underlying objectives of the Act are:

(i) To recognize and protect the rights of farmers for their contribution made in conserving, improving and making plant genetic resources available for development of new varieties.

(ii) To protect plant breeders" rights, to stimulate investment for research and development, both in public and private sector, for the development of new plant varieties.

(iii) To facilitate the growth of seed industry in the country, to ensure the availability of high quality seeds and planting material to farmers.

(iv) To give effect to Article 27.3(b) in Part II of the TRIPs Agreement.

¶102Nuziveedu applied for PV protection for all its Bt. Cotton Plant Varieties under the PV Act. As it urged "plants" were specifically excluded from patentability under Article 27(3)(b) of the TRIPS Agreement. Pursuant to India"s obligation to provide an effective sui generis system for protection of plant varieties, IPR rights in respect of plant varieties was developed by integrating the rights of breeders, farmers and village communities by way of the PV Act. Intellectual property rights in relation to plant varieties, including transgenic varieties, are the subject matter of protection under the provisions of the PPVFR Act. Under the PV Act, a new variety created is registrable under Section 15 of the PPVFR Act. Section 2(za) of the PPVFRA defines "variety" as follows: "(za) ―variety‖, means a plant grouping except micro-organism within a single botanical taxon of the lowest known rank, which can be—

(i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping;

(ii) distinguished from any other plant grouping by expression of at least one of the said characteristics; and

(iii) considered as a unit with regard to its suitability for being propagated, which

remains unchanged after such propagation, and includes propagating material of such variety, extant variety, transgenic variety, farmers' variety and essentially derived variety"

Section 2(za) includes a transgenic variety, such as the one developed by the Respondents containing the nucleic acid sequence, which can be registrable like a non-transgenic variety under the PPVFR Act.

¶103Section 14 of the Act entitles the registration "by (a) any person claiming to be the breeder of the variety; or (b) any successor of the breeder of the variety; or (c) any person being the assignee of the breeder of the variety in respect of the right to make such application; or (d) any farmer or group of farmers or community of farmers claiming to be the breeder of the variety‖ (Section 16). The subject matter of the application should be that the seed or variety should be "a. of such genera and species as specified under sub-section (2) of section 29; or bwhich is an extant variety; or c. which is a farmers' variety." (by Section 14). Section 15 (1) enacts what are registrable varieties and states a "new variety shall" be registered if it ―conforms to the criteria of novelty, distinctiveness, uniformity and stability.‖ The requirement that an extant variety too shall be registered if it confirms to the same criteria is stipulated in Section 15 (2); Section 15

(3) enacts by explaining the criteria of novelty, distinctiveness, uniformity and stability. Section 15 (4) states that ―4. A new variety shall not be registered under this Act if the denomination given to such variety-i. is not capable of identifying such variety; or ii. consists solely of figures; or…‖

¶104A transgenic variety can be a "new variety" and, therefore, registrable under Section 15 (1) provided it satisfies the conditions of ―novelty, distinctiveness, uniformity and stability‖; a ―breeder‖ under Section 14(1) includes the breeder of such transgenic variety. Therefore, there is no merit in Monsanto"s argument that its products cannot ipso facto be registered and secure protection under the PV Act. Under Section 24, varieties, other than essentially derived varieties can be given registration. The facility of benefit sharing then is conferred upon all interested to seek the advantages, upon fee determined

in this regard. What is crucial in this enactment is benefit sharing under Section 26. If someone"s variety with a unique trait (like the Bt. Trait) is used to create a new variety, benefit sharing can be claimed from the creator of the new variety under Section 26 of the PPVFR Act read with Rules 41 to 44 of the PPVFR Rules. The registration of a plant variety or a transgenic variety under Section 28 of the PPVFR Act confers certain exclusive rights enshrined therein on the breeder. Section 30 of the PPVFR Act provides for "Researcher"s rights" allowing use of any registered variety for developing new varieties. Under section 39, the farmers have the right to save, sow, re-sow, exchange, share and sell the farm saved seeds of any protected variety including a transgenic variety. Section 39(iv) gives farmers the right to save, use, sow, resow, share or sell his farm produce including seed of a variety registered under the Act. This kind of wide collection of rights is not available in any other farmers" rights legislation. Section 39(2) gives farmers certain protections and guarantees of performance of the variety or peculiar feature which a registered variety"s owner represents. This is relevant in the context of the failure of crop including of registered varieties; farmers can sue the company or breeder who claims the particular feature, which does not materialise, or underperforms. These are invaluable rights, which no other farming community or individual farmer apparently possesses anywhere else; herein lies the uniqueness of Indian legislation which sets it apart from the US and Canada; it is a clear rationale to distinguish the ruling in Percy Schmeiser(supra).The court also notices that under the PV Act, if a variety (including a transgenic variety) is used without permission or authority of the registered proprietor, it is open to the latter to claim injunctive remedy under Section 64 in a suit for infringement. Such right to infringement includes a right to sue for a "right relating to a variety" (Section 65 (1) (a)). Thus, if a trait (like a DNA strand, or the nucleic acid sequence as in the present case) is used without the registered proprietor"s permission, in any manner (with or without registering a further variety) it could amount to infringement and thereby, invite a suit for injunction and damages, under Section 64 (a) or (b).

¶105As regards benefit sharing, in addition to the provisions under the PV Act, relevant sections of the Biological Diversity Act, 2002 (the "Biodiversity Act"), that were enacted in compliance with the requirements of the Convention on Biological Diversity to

which India is a signatory; are also be applicable. The purpose of the Biodiversity Act is to, inter alia, realize equitable sharing of benefits arising out of the use of biological resources and associated knowledge. The main objectives of the Act are conservation, sustainable use and equitable benefit sharing out of the utilization of bioresources.18Section 21 of this Act provides for benefit sharing when given effect to, by the National Biodiversity Authority; clause (2) of which specifically provides as follows: "(2) The National Biodiversity Authority shall, subject to any regulations made in this behalf, determine the benefit sharing which shall be given effect in all or any of the following manner, namely:—

(a) grant of joint ownership of intellectual property rights to the National Biodiversity Authority, or where benefit claimers are identified, to such benefit claimers;

(b) transfer of technology;

(c) location of production, research and development units in such areas which will facilitate better living standards to the benefit claimers;

(d) association of Indian scientists, benefit claimers and the local people with research and development in biological resources and bio-survey and bio-utilisation;

(e) setting up of venture capital fund for aiding the cause of benefit claimers;

(f) payment of monetary compensation and other non-monetary benefits to the benefit claimers as the National Biodiversity Authority may deem fit."

¶105Section 92 of the PV Act enacts a non-obstante clause, which overrides all provisions to the contrary, contained in any other law. The cumulative effect of these is that when Section 3 (j) was enacted as a patent exclusion, the Parliament had knowledge of the PV Act, which was enacted almost contemporaneously. A known principle of statutory construction is that the Parliament or the concerned legislature is deemed to be aware of existing laws when it enacts new law [Syndicate Bank v Prabha D. Naik (2001) 4 SCC 713]. Likewise, as observed in Royal College of Nursing of the UK v Depat. Of Health and Social Security 1981 (1) All ER 545, the Parliament or a legislative body is presumed to be aware of existing state of affairs and the laws particularly of the facts relevant "fall within the same genus of facts as those to which the expressed policy has been formulated". So viewed, India"s commitment to TRIPs, especially its commitment to enact a sui generis law, the enactment of the PV Act and its conscious exclusion of patent protection to matters falling within Section 3 (j) are to be construed as an expressed

18National Biodiversity Authority, FAQs (available at: http://nbaindia.org/content/19/16/1/faq.html) (last accessed on: 05.03.2018)

intention to deny patents to "plants..including seeds, varieties" or any part thereof. The construction advocated by Monsanto, i.e that the trait value created otherwise than by a natural biological process, does not fall within the exclusion is, therefore, without force; in fact, the "trait" it developed and for which patent was granted, is subsumed by the "variety" culminating in a "seed" and later a "plant". Undoubtedly, the trait is part of both the variety or the seed, or both and, therefore, excluded. It is, therefore, held that Section 26 of the PV Act read with Rules 41 to 44 of the PPVFR Rules, should be read concurrently with section 21(2) of the Biodiversity Act, in order for Monsanto to claim benefit sharing for Nuziveedu"s use of the Bt. Trait contrary to its submission.

¶106Monsanto had urged that Nuziveedu had enjoyed the benefit of its patent, and paid license fee all these years; it also sought its no objection – to apply for registration under the PV Act. This estopped Nuziveedu from urging that Monsanto could not patent the CryAb2 trait. This court is of opinion that the payment of license fee, under the arrangement by Nuziveedu was on an assumption that Monsanto"s patent was valid in law. This could not have precluded Nuziveedu from challenging the validity of the patent in the suit. It is well established that there can be no estoppel or waiver of statutory rights; in the field of taxation it is, for instance recognized that mere payment of amounts extracted under pretence of lawful levy do not preclude challenge to the collection at a later stage: State Of Punjab & Anr v Devans Modern Brewaries Ltd 2004 (11) SCC 26; Suraj Mall Mehto v AV Viswanath Sastri AIR 1954 SC 545; Bashesharnath v. I.T Commissioner AIR 1959 SC 149; and Olga Tellis v Bombay Municipal Corporation AIR 1986 SC 180.

¶107For the above reasons, it is held that the learned single judge"s conclusion that the PV Act and the protective mechanism was an option, or alternative, which Monsanto could possibly have resorted to, in addition to patent protection, under the Patents Act, is incorrect. These two systems are not complimentary, but exclusive, in the case of all processes and products falling under Section 3 (j) of the Patents Act. Nuziveedu"s contention with respect to patent exclusion, therefore, succeeds. The court at the same time realizes that the patent granted to Monsanto has stood all this while. Given these factors, it is held that Monsanto is at liberty to claim registration under the PV Act, with

the benefit of its filing the patent application, as far as the date of filing and for purposes of Section 15 of the PV Act. In case Monsanto wishes to avail its right, the application or applications (for registration) under the PV Act shall be preferred within three months and decided in accordance with its provisions; such claims shall be decided in accordance with law. Subject to these liberties, Nuziveedu"s counter claim succeeds and is allowed. Trademark Aspect and the Termination of the sub-license agreements

¶108In light of the intent expressed in the Cotton Seeds Price (Control) Order, 2015, the learned single judge held that the termination of the sub-license agreements by Monsanto without considering Nuziveedu"s request was unwarranted, and stated as follows: ―128. The State government legislations or notifications issued on the subject in exercise of powers conferred upon them by such law, as indeed the Cotton Seeds Price (Control) Order, 2015 promulgated by the Central Government, again in exercise of its statutory powers conferred by Essential Commodities Act, 1955 provide not only the "law" but also reflect the "public policy" of the State and, thus, the "consideration" of the agreement between the parties in order to be lawful, within the meaning of Section 23 of the Contract Act must be in accord with such law and public policy and not be opposed or in derogation thereof.

¶129Thus, in the opinion of this court, Monsanto were duty bound to consider the request of the defendants as made by the communications beginning July 2015, for modification of the terms as to the rate of trait fee payable under the 2015 sub-license agreements for which the mechanism had earlier been agreed upon in the form of Article 11.03. Since Monsanto did not adhere to their obligation under the contract, the demand of payment under the contract terms being not lawful, it apparently being higher than the trait fee permitted by the law in force, the defendants could not have been found to be in default or to have breached their obligations within the meaning of Article 9.02 As a sequitur, the termination of the sub-license agreements by communications dated 14.11.2015 appears prima facie to be illegal and arbitrary.

¶130One is conscious that the defendants seem to have reconciled to the position wherein the sub-license agreements are to be treated as all but dead. It appears that they having at one stage sought restoration of the contract, including by counter claim (CC 50/2016) presented before this court (which was withdrawn on 15.02.2017), do not seem to be interested

in renewed arrangement with the plaintiffs, now taking the position that the grant of patent itself is bad in law and thus, asserting their right to continued use of the technology with impunity. Having taken the plea in the case that the termination of the 2015 sub-license agreements was illegal and arbitrary, and having demonstrated this contention to be prima facie correct, the unilateral termination of the contract by the plaintiffs being unauthorised, the defendants cannot wish away the natural corollary of the sub-license agreements coming back to life. Their stand in this litigation that the suit patent was wrongly granted by the Indian patent office has been found prima facie to be devoid of merit. Having been the beneficiary of the patented technology ever since entering upon the sub-license agreements with the plaintiffs in 2004, and taking advantage of the same all these years, apparently for commercial exploitation, it does not lie in the mouth of the defendants to turn around and say that they cannot be bound by such obligations under the sub-license agreements as protect the statutory rights of the plaintiffs vis-a-vis the suit patent or the registered trademarks.

¶131As this court is of the opinion that the sub-license agreements were illegally and arbitrarily sought to be terminated by the plaintiffs, the communications to such effect issued on 14.11.2015, followed by subsequent communications reiterating the same, are bound to be treated as of no consequence. In these circumstances, the parties are bound to be treated as continued to be locked with each other in the arrangement under the 2015 sub-license agreements, as the same stood prior to the purported termination communications dated

14.11.2015 (such communications being non-est) though, of course, with obligation for the consideration (trait value/ fee) to be charged not more than what is permitted by the law in India. For removal of doubts, if any, it must be added that such obligations vis-a-vis the trait fee chargeable would have to abide by the prescription in terms of the Cotton Seeds Price (Control) Order, 2015 as indeed of the Licensing and Formats for GM Technology Agreement Guidelines, 2016, both promulgated by the Government of India.‖

¶109It is evident, therefore, that the learned single judge held that for as long as the sub-license agreements were in force, or do not come to an end, by efflux of time, or upon being lawfully terminated, Nuziveedu cannot be injuncted against the use of the patented traits or the trademarks, and such rights to continued use of the suit patent or trademarks not being unconditional. With this subsisting position, the learned single judge held that no comment was necessary at that stage of the proceedings on the contentions of the parties as to the permissibility or otherwise of the use of the abbreviations "BG" and

"BG-II" by the defendants as trademarks.

¶110Monsanto"s grievance with respect to the learned single judge"s directions, in its appeal, is regarding the prima facie conclusion that the termination of the sub-licenses was illegal. It is urged that as proprietor of the technology and sole owner of the knowledge, which results in the development of the concerned trait, it cannot be compelled to part with its information, nor be prevented from recovering from those using it in an unauthorized manner. It urges that with the service of notice and expiry of the period of notice, the sub-licenses ended. As agreements that are terminable, the remedy of injunction – at the behest of the counter claimant-was impermissible. Monsanto cites Sections 14 and 41 of the Specific Relief Act and states that no specific relief is permissible in respect of agreements for which adequate monetary compensation is available. Nuziveedu, on the other hand, urges that the prima facie conclusions as to illegality of the termination of the sub-licenses is justified and further that being an essential commodity, under law, Monsanto cannot stop supply of the seeds or varieties that contain the traits in question. It further urges that the proper remedy for Monsanto is to claim registration under the PV Act, and if its registered variety is infringed, seek appropriate relief. In the meanwhile, it is under an obligation to supply the seeds and varieties it has for the "trait value" fixed by the Central Government.

¶111For a considerable time, seeds were listed as an "essential commodity" in terms of the Essential Commodities Act, 1955 ("ECA"). On 12 July 2007, the Essential Commodities Amendment Act, 2006was notified by which "cotton seed" was deleted from the ECA. The amendment also introduced under Section 2A to the ECA, empowering the Central Government to add or remove any commodity to/from the Act in consultation with the State. On 22.12.2009, the Central Government by notification brought cotton-seeds back in the list of essential commodities for six months; later by another notification, it was extended to one year and on 22.12.2010 the Central Government issued a Notification including cotton seeds under the schedule to the ECA. By a Central Government order dated 07.12.2015, in exercise of the powers under Section 3, ECA [Clauses 5(1), (2) and (5)] the power to fix maximum price was conferred upon that government. Consequently, by a notification (dated 8 March, 2016) the maximum price

for Bt. Cotton seed packets (450 grams of Bt. Cotton seed plus 120 grams refugia) was fixed for both BGI version and BG II version. The maximum price for Bt. Cotton seeds of the quantity notified for BG I is `635 (with no trait value) and the maximum price for Bt. Cotton seeds of the BG II variety was fixed at `800/- (including `40 fixed for the trait value).

¶112This court notices, at the outset that under Section 14 (1) (a) of the Specific Relief Act, there can be no specific performance of contracts for personal services. The supply of varieties or seeds, containing the Bt. trait, in this case, clearly does not fall within the exception under Section 14 (1) (a). Section 14 (b) and (d) fall into a category, or type, i.e where contractual obligations encompass minute details and continuous duty, which renders court"s supervision impracticable, or for the oversight of which the court cannot enforce material terms. In terms of Section 14 (1) (c) specific relief cannot be granted in respect of a contract which is in its nature determinable. Under Section 41 (e) injunctive remedy is not available "to prevent the breach of a contract the performance of which would not be specifically enforced". Monsanto relies on Section 14 (1) (c), the termination notices it issued to Nuziveedu and Section 41 (1) (e) to say that it cannot be injuncted to continue to supply the seeds or mandated to supply materials containing Bt. Trait, at any value, other than what it wishes to collect, from a customer chosen by it. Nuziveedu cites the trait value, fixed in state legislation, inclusion of seeds under the ECA and Section 42 of the Specific Relief Act.

¶113The facts of this case show that the agreements between the parties were for a defined time; Monsanto sought to terminate it and also sued for infringement; it sought interim injunction as well. Nuziveedu counter-claimed, justifying its refusal to pay anything more than the trait value fixed by state legislation, in the first instance, as well as the order issued by the Central Government in 2015. That the agreements are determinable cannot be prima facie denied. However, the question is: can injunction be refused, to Monsanto, or rather, can it be compelled to supply varieties containing the trait, for any price other than the price it seeks? It is here that Section 42 of the Specific Relief Act, requires a closer look. That provision clarifies that where a contract comprises

an affirmative agreement to do a certain act, coupled with a negative agreement, express or implead, not to do a certain act, the circumstances that the Court is unable to compel specific performance of the affirmative agreement shall not preclude it from granting an injunction to perform the negative agreement. If the obligation of a seed developer or supplier is not to charge more than what the law prescribes, it cannot legally collect it, till the law is overborne in a manner known to the Constitution-either by judicial declaration or by repeal. In such context, the insistence of Monsanto that it is free to nevertheless withhold supplies of seeds or varieties of seeds, containing the Bt. Trait, to Nuziveedu, cannot be countenanced. In the facts of this case, prima facie, the Court holds that a negative obligation, implied to honour the existing law, binds the parties. Furthermore, as an essential commodity, the supply of which is regulated by law (including the control of trait value), Monsanto is obliged to maintain the supplies, to facilitate production of Nuziveedu"s varieties for onward sale to farmers, sowing and harvesting of the crop.

¶114The court notes that the balance of convenience element is an important element that every court is compelled to weigh, apart from the question of prima facie likelihood of success in a suit or counter claim. The absence of a patent results in the lack of property in the use of CryAb2 and the consequent lack of control by Monsanto about its use by others, like Nuziveedu, who might have acquired it under agreement, lawfully, developed their varieties or breeds and sold it to the farming community. The grant of injunction is rendered untenable in these circumstances. Equally, the denial of a positive order, in the opinion of the court, results in the violation of provisions of the Essential Commodities Act, as it would deprive thousands, possibly a million or so farmers, the right to access to seeds that were hitherto available to them. This is a public interest element that the court cannot be blind to. In the ultimate event of Nuziveedu failing in its counter claim, the harm that might befall Monsanto during the pendent lite period is compensable, monetarily. In these circumstances, the Court is of opinion that pending trial of the suit, the directions of the learned single judge do not call for interference.

¶115As far as the challenge to the injunction with regard to trademark infringement is concerned, the learned single judge had recorded as follows:

"84. Though at the hearing, the defendants made it clear that they do not intend to use the registered trademarks "BOLLGARD" or "BOLLGARD-II" of the plaintiffs, the plaintiffs argued that insistence on the use of abbreviations "BG" "BG-I" or "BG-II" or any variation thereof is specious and ex facie unsustainable, referring in this context, inter alia, to Section 2(o) of the Trademarks Act wherein "name" includes any abbreviation thereof, as is relevant for purposes of the definition of the expression "mark" given in Section 2(m) of the Trademarks Act."

¶116In view of the above reasons, this Court records its conclusions and directs as follows:

(1) The subject patent falls within the exclusion spelt out by Section 3 (j) of the Patents Act; the subject patent and the claims covered by it are consequently held to be unpatentable. Nuziveedu"s counter claim is, therefore, entitled to succeed and is consequently allowed.

(2) Monsanto"s Suit CS(OS)(Comm) 132/2016, to the extent it seeks enforcement of the subject patent, is dismissed. However, the suit can proceed with respect to the claim for damages and other reliefs, in the light of the sub-license termination notices issued.

(3) The learned single judge"s directions to Monsanto to continue with its obligations under the sub-license agreements, including consequential orders with respect to payment and receipt of trait value, are upheld.

(4) Monsanto can apply for registration under the PV Act (within three months of this judgment); if it does so in terms of this judgment, the benefit of its previous patent can be granted to it, for the purposes of the said Act, in respect of determination of prior publication provisions and requirements.

¶117Monsanto"s appeal, FAO(OS)(Comm) 76/17 is consequently dismissed. Nuziveedu"s appeal, [FAO(OS)(Comm) 86/2017] is partly allowed; its counter claim is allowed to the above limited extent. There shall be no order on costs.

S. RAVINDRA BHAT (JUDGE)

YOGESH KHANNA (JUDGE) APRIL 11, 2018

* IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: 09.03.2018 Pronounced on: 11.04.2018 + FAO (OS) (COMM) 86/2017, C.M. APPL.14331, 14335, 15669, 17064/2017 NUZIVEEDU SEEDS LTD. AND ORS. …Appellants Through: Sh. C.A. Sundaram, Sh. Jayant Bhushan, Sr. Advocate with Ms. Diya Kapur, Ms. Swathi Sukumar, Ms. Swati Setia, Sh. Essence Obhan, Ms. Himanie Katoch, Sh. Nikhil Ratti Kapoor, Ms. Aakanksha Kaul, Ms. Pooja Katara, Ms. Charul Yadav, Sh. Abhishek Saket, Ms. Vijaya Singh, Sh. Jatin and Ms. Rohini Musa, Advocates. Versus MONSANTO TECHNOLOGY LLC AND ORS. …..Respondents Through: Sh. Sandeep Sethi, Ms. Prathiba. M. Singh, Sh. C.M. Lall, Sr. Advocates with Ms. Bitika Sharma, Sh. Kapil Midha, Ms. Namrita Kochhar, Ms. Deepshika Malhotra, Sh. Adarsh Ramanujam, Sh. Anil Dutt, Sh. Shantanu Agarwal, Sh. Rishi Agarwala, Ms. Anusuya Nigam, Sh. Lakshay Kaushik and Ms. Ruchika Wadhawan, Advocates. Sh. Sunil Mathews, Advocate, for UOI. Sh. Neel Mason and Ms. Ridhima, Advocates, for Amar Biotech Ltd. Sh. Anup Bhambhani, Sr. Advocate with Sh. Jatin Mongia and Sh. Animesh Kumar, Advocate, for applicant in C.M. No.17064/2017. + FAO (OS) (COMM) 76/2017, CAV. 328/2017, C.M. APPL.13348- 13352/2017 MONSANTO TECHNOLOGY LLC AND ORS. …..Appellants Through: Sh. Sandeep Sethi, Ms. Prathiba. M. Singh, Sh. C.M. Lall, Sr. Advocates with Ms. Bitika Sharma, Sh. Kapil Midha, Ms. Namrita Kochhar, Ms. Deepshika Malhotra, Sh. Adarsh Ramanujam, Sh. Anil Dutt, Sh. Shantanu Agarwal, Sh. Rishi Agarwala, Ms. Anusuya Nigam, Sh. Lakshay Kaushik and Ms. Ruchika Wadhawan, Advocates. NUZIVEEDU SEEDS LTD. AND ORS. …Respondents Through: Sh. C.A. Sundaram, Sh. Jayant Bhushan, Sr. Advocate with Ms. Diya Kapur, Ms. Swathi Sukumar, Ms. Swati Setia, Sh. Essence Obhan, Ms. Himanie Katoch, Sh. Nikhil Ratti Kapoor, Ms. Aakanksha Kaul, Ms. Pooja Katara, Ms. Charul Yadav, Sh. Abhishek Saket, Ms. Vijaya Singh, Sh. Jatin and Ms. Rohini Musa, Advocates. CORAM: HON'BLE MR. JUSTICE S. RAVINDRA BHAT HON'BLE MR. JUSTICE YOGESH KHANNA MR. JUSTICE S. RAVINDRA BHAT % Facts 1. This common judgment disposes of two appeals (FAO (OS) 86/2017 and FAO (OS) (COMM) 76/2017). Monsanto Technology LLC (referred to as "Monsanto") prefers FAO (Comm) 76/2017; Nuziveedu, the appellant in FAO (OS) 86/2017, would be referred to as such in this judgment. The facts in Monsanto"s appeal are referred to, for convenience. 2. The second and third appellants in Monsanto"s appeals are subsidiaries/affiliates of Monsanto Technology LLC ("Monsanto"). Monsanto set up the third appellant as a joint venture with Maharashtra Hybrid Seed Company ("Mahyco") to undertake Bt. Trait1 licensing business in India. These entities (Monsanto, Mahyco et al) are referred to collectively as "Monsanto". Nuziveedu is a private sector seeds company in India. The other respondents (in Monsanto"s appeals) are Nuziveedu"s subsidiaries; all are engaged in the same business of, inter alia, developing new hybrids and varieties of cotton. Nuziveedu and its subsidiaries currently possess approvals for over 29% of all cotton hybrids approved by the Genetic Engineering Appraisal Committee ("GEAC"), one of the regulatory bodies constituted under the Environment (Protection) Act, 1986 and rules thereunder, by the Ministry of Environment, Forest and Climate Change, to accord approval on proposals relating to the release of genetically modified organisms and products into the environment. 3. Monsanto appeals the judgment of a learned single judge (the "impugned judgment") which directed it to continue supplying Bt. Cotton transgenic variety (Donor Seeds) under the 2015 Sub-License Agreements except as to the rate of trait fee payable, thereunder. The learned single judge also held that Nuziveedu would be liable "to tender, and pay, the trait fee to Monsanto, for the use of the suit patent and trademarks, at such rates as are in accord with the prevalent local laws, as in force or revised from time to time; and (iii) upon being suitably notified, be obl