Patent Plant Variety Protection

Patent Punches over Bt Cotton (Monsanto vs Nuziveedu): Bt it or Eat it?


My short take in the Hindu on the Bt Cotton Wars and the misplaced notion that the Plant Varieties Act trumps the Patents Act. I argue that both co-exist and one does not trump the other. Our previous posts from Prashant and Rahul also make the same point, in different ways.

At the end of the piece, I’ve also recommended that the government consider the delightfully creative “eat the beetle” strategy advocated by maverick scientists in Assam, as below:

“Shouldn’t our government be encouraging a diversity of approaches in Indian agriculture, entailing both GM technology and the more traditional processes that have stood the test of time? More so, when nature has taught us time and again that the best of technologies can never really match up to the wisdom of an innate evolutionary process.

In fact, if it wishes to be a bit radical, the government could even encourage what maverick scientists did in Assam recently, when they encouraged farmers to reimagine beetles (that destroyed crops) as protein-laden delicacies to be consumed with relish. And this leaves us with just one real question in the end: can the bollworm be barbecued?”

Indeed, this entomological epiphany (insects as a good protein source) is catching on quickly, and Indian scientists in various parts of the country are pushing for this healthy Bodo diet comprising grasshoppers, caterpillars, silkworms etc.

Lastly, I’ve taken issue with this tendency of government agencies (with no expertise or legal competence) to rush in and regulate domains that even angels fear to tread on! Regulatory over-reach appears to be in fashion these days! A point I made in this letter to the DIPP exhorting them to withdraw a problematic memo where they seek to interpret a legal provision (section 31D), despite having no competence (under the law/constitution) to do so.

Unfortunately, I’m yet to receive a reply on the merits from the DIPP, barring a short note from the signatory of the memo (Ms Surabhi Sharma) stating as below:

“I, unfortunately, am not dealing with the matter. I am, therefore, forwarding your kind email to the concerned officer, Mr. Sushil Satpute, Director DIPP, (CC’ed on this email) requesting that he may look into it at the earliest.”

Anyway, for those interested, here is the link to the full piece in the Hindu. And I reproduce below:

The battle over Bt cotton

Genetically Modified Organisms (GMOs) breed controversy like no other. Little wonder then that Monsanto’s much-maligned Bt cotton has spawned the mother of all intellectual property (IP) disputes in India, involving at least 15 different proceedings in various courts, government agencies and tribunals at last count.

Most proceedings appear to have come at the behest of certain seed companies led by Nuziveedu. Its founder, Prabhakar Rao, is leaving no stone unturned to ensure that these seed majors beget a better deal than what they bargained for when they first contracted with Monsanto to licence its proprietary GM technology.

A recent controversy centres around which of the two IP regimes governs the dispute: the Patents Act or the Protection of Plant Varieties and Farmers’ Rights Act (PPVFRA). To me, this appears to be a false dichotomy and a red herring of sorts. Both these legislations apply and one does not necessarily trump the other. But first a word about the technological underpinnings of this dispute, so this point about co-existence can be appreciated better.

Monsanto and patent protection

Monsanto patented a number of components related to Bt cotton, a biotech invention involving the infusion of the Bt gene into the cotton genome. Bt stands for Bacillus thuringiensis, a bacteria whose genome codes for a protein that kills the bollworm, a pest that has perennially plagued the cotton plant. The patent does not cover the plant itself, as plants and animals are ineligible for patent protection in India, as are ordinary biological processes for creating them. However, microbiological processes (such as methods of creating transgenic varieties) and microorganisms (such as new and inventive transgenes and their constructs) are patentable under the terms of the Indian Patents Act, and Monsanto’s patents cover most of these components. It bears noting in this regard that Bt cotton technology was never static, but evolved over time to cater to the pest resistance that soon developed. While the technology pertaining to Bollgard-I was never patented in India (since this technology was discovered prior to India’s undertaking of Trade-Related Aspects of Intellectual Property Rights or TRIPS commitments), Bollgard-II was, and it is this technology that is in dispute.

Using the patented technology, Monsanto created a host of donor Bt cotton seeds and distributed them to seed companies under specific agreements mandating the payment of royalties (trait fees), etc. Seed companies in turn used these donor seeds to introgress the desirable genetic trait (bollworm resistance) into their own specific hybrid varieties by backcrossing.

Monsanto’s patents cover various components of the technology embedded in the donor seeds handed out to seed companies (the new man-made transgene, the DNA construct and the method of creating the new cotton genome). Any seed company that uses this donor seed and creates a new plant variety is entitled to register such variety under the PPVFRA.

This new plant variety registration, however, does not extinguish Monsanto’s upsteam patent rights. Neither does the patent right override the plant variety protection. They co-exist. As such, seed companies cannot commercialise their hybrids without a patent licence from Monsanto, in much the same way that Monsanto cannot sell or distribute these hybrids without permission from the seed company. If Monsanto refuses to licence the seed companies, they can move for a compulsory licence (CL) under the Patents Act, provided they satisfy the terms of Section 84, which states that a CL could be granted if the patented invention is exorbitantly priced or not available in reasonable quantities to the public or is not being worked in the territory in India.

But this licence application has to be under the terms of the Patents Act, and not the PPVFRA. Given this clear-cut demarcation, one wonders what the legal fracas is all about!

Unless of course one were to invalidate Monsanto’s patent. If news reports are to be believed, there are pending invalidity proceedings before both the IPAB (Intellectual Property Appellate Board) as also the DIPP (Department of Industrial Policy and Promotion).

At cross-purposes

The DIPP proceeding is a particularly interesting one, given that Section 66 of the Patents Act has been invoked, an exceptional provision that provides for revocation on grounds that the patent is “mischievous to the state or generally prejudicial to the public”. The key contention appears to be that the patent is no longer effective, given the pest resistance that developed over time. A ground not likely to pass muster with a court of law, given the rather high bar for invoking Section 66. Quite apart from the fact that it appears a tad bit paradoxical that while one wing of the government (the Ministry of Agriculture) has recently issued a draft notification qualifying GM technology as an industry “standard” that must mandatorily be licensed on FRAND (Fair, Reasonable and Non-Discriminatory) terms to as many seed companies as possible, another one (DIPP) insists that the technology is useless!

More surprising is the fact that the Ministry of Agriculture, with no proven expertise or jurisdictional competence over patent issues, would go out on a limb and suggest (in an official draft notification no less) that Monsanto’s patents over upstream GM technology must necessarily yield to downstream plant variety rights.

Whatever be our personal predilections against GMOs, it is a matter of deep concern that government agencies appear to be flouting the rule of law with impunity. While there may be merit in regulating GMO patents, this must be done after following due processes under the law, through the relevant competent authority (such as the Patent Office), and not through abusive lawmaking designed to seemingly favour one set of stakeholders who are essentially engaged in a private commercial dispute.

More importantly, one wonders why the government chooses to concentrate all of its eggs in the Bt cotton basket. Particularly so when its own institutes contend that even Bollgard-II technology is soon succumbing to progressive pest resistance.

Shouldn’t our government be encouraging a diversity of approaches in Indian agriculture, entailing both GM technology and the more traditional processes that have stood the test of time? More so, when nature has taught us time and again that the best of technologies can never really match up to the wisdom of an innate evolutionary process.

In fact, if it wishes to be a bit radical, the government could even encourage what maverick scientists did in Assam recently, when they encouraged farmers to reimagine beetles (that destroyed crops) as protein-laden delicacies to be consumed with relish. And this leaves us with just one real question in the end: can the bollworm be barbecued?”

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

One comment.

  1. D.T.Eshwar

    The title of the article is good. Given below is my understanding on this subject.
    Monsanto developed an event which has optimal toxicity to control bollworms and which could be commercialized. The event was realized in one particular Cotton variety called as COKER, which is amenable for regeneration through tissue culture. From Coker this was transferred to a few local hybrids.
    Now the seed companies (Plant breeding companies) introgressed the Monsanto’s event into their hybrids, through standard backcross method of breeding. That means Bt gene which is represented by a unique event (protected by a patent under US law) was introduced into the genetic backgrounds created/developed by Indian Seed companies.
    If the patents are correctly interpreted, it is not clear whether the rights are applicable on descendant plants and whether such claims were granted in the first place,as plants including essential biological processes cannot be patented as per Indian Patent act.
    Now comes PVPFRA, where IPR for all varieties including transgenic varieties and Hybrids (as EDVs) can be protected. Section 30 (b) of PVPFRA provides for breeders rights for creation of new varieties and also describes the manner of Benefit sharing under Section-26. Now, when PVPFRA has been exactly created in India for the purpose of Plant variety protection including Transgenic plants, then the argument that patents co-exist for plants will not stand, eventhough a patent has been granted for a set of claims.

    Reply

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