Delhi High Court Rules Against Evergreening of CTPR Patent by FMC Corporation

Introduction

In the landmark case of FMC Corporation & Ors. v. GSP Crop Science Private Limited, adjudicated by the Delhi High Court on November 14, 2022, the court addressed significant issues related to patent infringement, prior claiming, and the controversial practice of evergreening in the agrochemical sector. The plaintiffs, including FMC Corporation USA and its subsidiaries, sought an injunction against GSP Crop Science Pvt. Ltd. (the defendant) for allegedly infringing on their Indian Patent No. IN252004, which pertains to a method for preparing Fused Oxazinones used in the manufacture of the insecticide Chlorantraniliprole (CTPR). This case not only delved into the intricacies of patent law but also highlighted the judiciary's stance on preventing the extension of monopolies through redundant patent filings.

Summary of the Judgment

The Delhi High Court, presided over by Justice Prathiba M. Singh, dismissed the plaintiffs' application for an interim injunction, effectively allowing GSP Crop Science to proceed with the manufacturing and sale of CTPR. The court's decision was primarily based on the finding that the patent in question (IN'004) was prima facie invalid due to prior claiming and similarities with an earlier patent (IN'332). Additionally, the court identified the plaintiffs' attempts to 'evergreen' their patent portfolio for CTPR through multiple related patents, thereby extending their monopoly beyond the original patent's expiry.

Analysis

Precedents Cited

The judgment referenced several key legal precedents and provisions to substantiate its findings:

Section 64 of the Patents Act, 1970: This section outlines grounds for revoking a patent, including prior claiming and lack of inventive step.
Section 104A of the Patents Act, 1970: Places the onus on the defendant to prove non-infringement in cases of process patents.
Supreme Court in Novartis AG v. Union of India (2013): Warned against the abuse of the patent system through serial filings aimed at extending patent monopolies.

Legal Reasoning

The court meticulously compared the suit patent (IN'004) with the earlier process patent (IN'332), identifying substantial overlaps in the processes and intermediates claimed. Key points in the legal reasoning included:

Prior Claiming: The suit patent was found to be a subsequent application that essentially duplicated the claims made in IN'332, rendering IN'004 invalid.
Evergreening: An extensive list of 30 related patents and applications filed by FMC Corporation indicated a deliberate attempt to extend exclusivity on CTPR beyond the original patent term.
Abuse of Patent System: The court highlighted that the multiple filings were not justified by genuine innovations but were instead aimed at maintaining a monopolistic grip on CTPR.
Non-Disclosure and Misrepresentation: The plaintiffs failed to disclose lapsing and refusals of corresponding patents in other jurisdictions, violating Section 8 of the Patents Act.

The court also scrutinized the plaintiffs' claims of "commercial success" of the suit patent, finding contradictions as the plaintiffs admitted the patent was not being worked in India for over 19 years.

Impact

The judgment has profound implications for the agrochemical industry and patent law in India:

Deterring Evergreening: The court's stance serves as a deterrent against the practice of filing multiple patents for minor variations to extend patent life.
Patent Validity Scrutiny: Emphasizes the need for thorough examination of patent validity, especially concerning prior claims and inventive steps.
Balancing Public Interest: Reinforces the judiciary's role in ensuring that patent monopolies do not stifle competition and innovation, thereby safeguarding public interest.
Encouraging Genuine Innovation: Promotes the filing of patents based on substantial and novel contributions rather than strategic monopolistic maneuvers.

Complex Concepts Simplified

1. Evergreening

Evergreening refers to the practice of extending the life of a patent beyond its original expiry by filing for additional patents on slight modifications or different aspects of the original invention. This prevents generic competition and maintains a prolonged monopoly.

2. Prior Claiming

Prior claiming occurs when a subsequent patent application claims the same invention as an earlier one, either directly or indirectly. This can render the newer patent invalid if it does not present a novel or inventive step beyond the prior claims.

3. Interim Injunction

An interim injunction is a temporary court order issued to prevent a party from pursuing a particular action until the final resolution of a case. In patent disputes, it can stop the alleged infringer from manufacturing or selling a product that allegedly violates the patent.

Conclusion

The Delhi High Court's judgment in FMC Corporation & Ors. v. GSP Crop Science Pvt. Ltd. sets a critical precedent in Indian patent law by underscoring the judiciary's commitment to preventing the misuse of the patent system through practices like evergreening and prior claiming. By invalidating the suit patent IN'004 and dismissing the plaintiffs' injunction application, the court not only curbed an attempt to unjustly extend patent exclusivity but also reinforced the importance of genuine innovation and the sanctity of patent claims. This decision serves as a reminder to corporations and patent filers to adhere strictly to the principles of novelty, inventive step, and full disclosure, ensuring that the patent system remains a tool for fostering true technological advancement rather than a mechanism for maintaining prolonged monopolies.