Monsanto’s Patent on Method of Producing Transgenic Plants refused by IPAB

Monsanto’s Indian patent application 2407/DEL/NP/2006 on transgenic plants with heat/salt/drought tolerant plants is rejected by IPAB. The subject patent application is directed to a method of producing a draught/stress/heat/salt/drug-tolerant transgenic plants by inserting a recombinant DNA molecule that expresses a cold shock protein CspA or CspB. The subject patent application was rejected by the Controller of Patents on lack of inventive step under 2(1)(JA) in view of three prior art references and under section 3d.

The final set of amended claims contain four claims, the independent claim is as follows:

1. A method of producing a transgenic plant comprising the steps of:

(a) inserting into the genome of plant cells a recombinant DNA molecule comprising a DNA encoding a cold shock protein, wherein said DNA encoding said cold shock protein is operably linked to a promoter and operably linked to a 3′ transcription termination DNA polynucleotide;

(b) obtaining a transformed plant cell containing said recombinant DNA;

(c) regenerating plants from said plant cells; and

(d) selecting a plant for increased heat tolerance, salt tolerance, or drought tolerance.

In the IPAB decision, it was held that the cited prior art discloses the structure and function of cold shock protein CspA and CspB and thus would be obvious to a person skilled in the art to make transgenic plants using the same. Further, under section 3(d), it was held that the subject patent’s invention is just a new application of the already known cold shock protein in producing stress/drought/heat/salt-tolerant transgenic plants.

It was held that it was already known in the prior art to use cold shock protein for expression in E.coli, a yeast cell, vertebrate cells, human cell Hela, Rat cell BLAB/c 3T3, NIH 3T3, and rat embryo fibroblasts. It is also further disclosed in the prior art: “additional vectors and sources …………. including …….yeast cloning vectors, plant vectors …………[page 23 and 24 ]”

It was thus held that there is sufficient suggestion in cited prior art documents that the method would work for plants with reasonable success, hence rendering the subject patent obvious.

When the structure and function of cold shock protein were already known in the cited prior art and it is obvious to persons skilled in the plant to make transgenic plant which is heat or drought tolerance by inserting the recombinant DNA molecule in its genome.”

Similarly, under section 3d objection, it was held that: “Mere use of the admittedly known substance is not permitted under section 3(d). The argument of the surprising results will not change the position as it will still be a new use of known even if it produces better results.” It was already known to use CspA, CspB protein of the ‘cold shock domain’ for expression of cold shock protein in E.coli, yeast cell, vertebrate cells, human cell Hela, Rat cell BLAB/c 3T3, NIH 3T3, and rat embryo fibroblasts. But it was not previously used to achieve that specific result in plants. The selection of specific proteins from the ‘cold shock domain’ to achieve better results in plants contributes merely to a new use of such substances.

It was thus finally concluded that the subject patent claim is a new use of known cold shock protein for expression in plants to produce heat/salt/drought tolerant plants and is merely a discovery of new property of a known substance and not an invention.


The refusal of grant of this Monsanto’s patent will definitely by applauded by the farmer’s community throughout India as they will be free to develop and reproduce such draught/salt/heat-tolerant plants without infringement of any third party’s patent on the same. Had this patent been granted, Monsanto would have controlled the production and sale of their patented climate-resilient plants/seeds and kept the much higher prices causing many plights to the farmers in India. In calamities like the recent Uttarakhand floods, such salt-tolerant crop varieties are needed in large amounts by the farmers of such areas who otherwise cannot produce crops because of sea salt deposition on their farms in such conditions. If this patent would have been granted, the farmers would have to buy such plants/seeds from Monsanto or undergo licensing agreements to use the patented method, which now they will be able to use and produce themselves freely.

Also, after this decision came out, Navdanya** publishes as below:

We applaud the decision of the Patent Office and Appellate Board and will disseminate it worldwide so other countries can use it to protect farmers, biodiversity and seed sovereignty. We will also be ready to intervene in case Monsanto brings the case to the Supreme Court.”

On another hand, such a decision will be condemned by such seed and plant innovators like Monsanto in the developed markets like the US and EP, especially when this patent has been successfully granted in the US and EP. According to them, refusal of patent protections diminishes motivation for further innovation and that the rewards for innovation should be paid so that more innovative products and processes keep arriving in the markets. For pharmaceutical inventions too India is already on the priority watch list of the US for refusing/ revoking patents u/s 3d which have been successfully granted in other countries.

** Navdanya is a network of seed keepers and organic producers spread across 16 states in India. It has its 54 seed banks across the country and organic farm spread over an area of 20 acres in Uttranchal, north India.

About the Author: Ms. Meenakshi Khurana, Patent Attorney at Khurana & Khurana and can be reached at

Follow us on Twitter: @KnKIPLaw

Leave a Reply

Your email address will not be published. Required fields are marked *

seven − three =


  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010