Washington, DC
April 30, 2008
Controversial court patent case
for simple yellow legume has become rallying point for
“biopiracy” concerns
The United States Patent and
Trademark Office (USPTO) today rejected all of the patent
claims for a common yellow bean that has been a familiar staple
in Latin American diets for more than a century.
The bean was erroneously granted patent protection in 1999, as
US Patent Number 5,894,079, in a move that raised profound
concerns about biopiracy and the potential abuse of intellectual
property (IP) claims on plant materials that originate in the
developing world and remain as important dietary staples,
particularly among the poor.
A research center, the
International Center for Tropical Agriculture (known by its
Spanish acronym, CIAT), which is supported by the
Consultative Group on
International Agricultural Research (CGIAR), led the legal
challenge to the patent through the USPTO’s reexamination
process.
“We are happy that the patent office has reached a final
decision in this case but remain concerned that the ex partes
patent reexamination procedure meant that these patent claims
remained in force for such a long time,” said Geoffrey Hawtin,
Director General of CIAT, which has been fighting the patent
since 2001. “For several years now, farmers in Mexico, the USA
and elsewhere have unnecessarily endured legal threats and
intimidation for simply planting, selling or exporting a bean
that they have been growing for generations.”
At issue is a hearty and nutritious yellow bean—similar to the
pinto bean—that is known to plant breeders as Phaseolus vulgaris
but is commonly called azufrado or Mayocoba bean by Latin
American farmers and consumers. In the 1990s, a Colorado man,
Larry Proctor, bought some beans in a market in Mexico and after
a few years of plantings, claimed he had developed what he
called “a new field bean variety that produces distinctly
colored yellow seed which remains relatively unchanged by
season.” He dubbed it the “Enola bean,” filed a patent
application and obtained a 20-year patent that covered any beans
and hybrids derived from crosses with even one of his seeds.
Under USPTO rules, material published before a patent
application that was not brought to the attention of the patent
examiner can be used to reverse a granted claim. CIAT sought a
reexamination [1] of the Enola patent. The Food and Agriculture
Organization (FAO) of the United Nations and ETC Group (formerly
RAFI, the Rural Advancement Foundation International), a
Canada-based nongovernmental organization dedicated to
conservation and sustainable use of biodiversity, also denounced
the Enola bean patent.
CIAT was able to dispute the inventor’s claims to a unique color
by providing published evidence of 260 yellow beans among the
almost 28,000 samples of Phaseolus in its crop “genebank.” At
least six of the CIAT varieties were, to most observers,
identical to the bean described in Proctor’s patent documents on
the basis of color and genetic markers. CIAT also put forward
publications to show that the claims in the patent application
took credit for research already widely available in scientific
literature and thus claims made regarding the breeding of the
bean in his patent also failed to meet the patent office’s
statutory requirements for “non-obviousness and novelty.”
In addition, CIAT pointed out that Proctor had not obtained a
permit to export the beans from Mexico and that a version of the
bean variety in question had been released to the public by the
Mexican government in the 1970s.
Yet Proctor actively enforced his patent. At one point, the
patent-holder’s US$0.6-claim on every pound of yellow beans sold
in the United States caused a steep decline in exports of such
beans from Mexico to the USA, according to Mexican government
sources.
The patent office issued a preliminary decision in 2003
rejecting all the patent claims and gave a final rejection in
December 2005. Proctor filed an appeal through the USPTO, and in
accordance with USPTO rules, the patent remained in force while
the appeal was being considered by the Board of Patent Appeals
and Interferences (BPAI). Proctor can still appeal the USPTO
decision in the US federal courts, all the way to the Supreme
Court venue, a costly move; if he so chooses.
“We understand that individuals and companies have a right to
patent what are clearly novel agriculture innovations,” said
Hawtin. “But when food crops are involved, particularly crops
that have been used for years, governments have a duty to ensure
that they have been presented with a clearly distinct and novel
discovery and that the plant material used in the research and
development was lawfully obtained. Agricultural researchers have
a responsibility to make sure that publications are easily
available to patent examiners.”
CIAT officials said that, while they were concerned about the
immediate economic impact of the Enola patent, more broadly,
they worried that the patent would establish a precedent
threatening public access to plant germplasm—the genetic
material that comprises the inherited qualities of an
organism—held in trust by CIAT and research centers worldwide.
The CIAT genebank is one of 11 maintained worldwide by the
CGIAR, where crop materials such as seeds, stems and tubers are
held in trust with the United Nations Food and Agriculture
Organization (FAO). The genebanks house a total of about 600,000
plant varieties in publicly accessible collections, which are
viewed as the pillar of global efforts to conserve agriculture
biodiversity and maintain global food security. Plant breeders
in both the public and private sectors are constantly seeking
access to these resources to help them breed new types of crop
varieties, particularly when existing varieties are threatened
by pests or disease.
“Hopefully, this case can help guide future reviews of patent
applications and future preventive actions on the part of the
CGIAR Centers, so that farmers who have been growing a
particular variety for over 100 years will not wake up one day
to discover that their traditional crops have suddenly become
someone else’s intellectual property,” said Victoria
Henson-Apollonio, Manager of the CGIAR Central Advisory Service
on Intellectual Property (CAS-IP), the CGIAR office charged with
assisting the Centers on matters of IP.
CIAT’s patent challenge is part of the CGIAR’s ongoing effort to
ensure that intellectual property claims regarding plant
materials do not falsely seek to privatize materials already in
widespread use. The challenge was endorsed by the FAO and the
Genetic Resource Policy Committee of the CGIAR.
About the CGIAR
The Consultative Group on International Agricultural Research
(CGIAR), established in 1971, is a strategic partnership of
countries, international and regional organizations and private
foundations supporting the work of 15 international agricultural
research Centers. In collaboration with national agricultural
research systems, civil society and the private sector, the
CGIAR fosters sustainable agricultural growth through
high-quality science aimed at benefiting the poor through
stronger food security, better human nutrition and health,
higher incomes and improved management of natural resources.
About CIAT
The International Center for Tropical Agriculture (CIAT) is a
not-for-profit organization that conducts socially and
environmentally progressive research aimed at reducing hunger
and poverty and preserving natural resources in developing
countries. CIAT is one of the 15 Centers supported by the CGIAR.
www.ciat.cgiar.org.
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