D.P.S.PARMAR,TECHNICAL MEMBER (PATENTS) - (1.) THE appellant is aggrieved by the order of the respondent No.1 dated 22.06.2011 (Priority date 20.09.2003) wherein he refused patent application No.2407/DEL/NP/2006 relating to "methods for enhancing stress tolerance in plants and methods thereof". This title was latter amended as "A method of producing a transgenic plant with increased heat tolerance, salt tolerance, or drug tolerance."
(2.) THE respondent has refused to grant patent as she found subject matter of claims lack inventive step in view of (i) Willimsky Gerald Journal of bacteriology .Vol174,No 20 ,1992,6326 -6335,(ii) WO 90/09447and US 5470971.(ii) Claims do not define any invention under section 2(1)(ja) of the Patents Act, 1970 as structure and function of cold shock protein was already known in cited prior art and it is obvious to person skilled in plant to make transgenic plant. (iii) It is mere application of already known cold shock protein in producing cold stress tolerant plant and tolerant to heat, salt and drought conditions, claims fall within the scope of Section 3(d) of The Patents Act, 1970. (iv) . She also found that it is not patentable under 3(j) as claims also include essential biological process of regeneration and selection, which includes growing of plant in specific stress condition. Lack of inventive step
(3.) THE counsel for the appellant submitted as on the priority date of the subject application there were a number of eukaryotic, particularly plant stress related genes identified. A person skilled in the art would rather use these genes for production of stress tolerant plant rather than selecting a bacterial gene whose expression in plants will be all the more unpredictable. Thus the state of the art on the priority date of the subject application clearly taught away from methods to produce stress tolerant plants by incorporating bacterial genes whose function even in the bacterial system was not clear. Therefore, there was no reason for one of skill in the art to resort to a simpler system like bacteria for such genes. The counsel for the appellant submitted that state of the art existing on the date of priority of the subject patent application provided no motivation to produce plants that are heat, salt or drought tolerant by incorporation of bacterial genes.;