A patent problem with Enola bean
In the northwest of Mexico, yellow bean is an important staple and source of income for small farmers. But for the last decade production has been under threat, with farmers falling foul of a US-registered patent simply by continuing to sell the bean they have traditionally grown. Since 1999, Larry Proctor, a US citizen, and his Colorado-based seed company POD-NERS, have held a patent for 'Enola Bean', a yellow field bean variety of Phaseolus vulgaris, that Proctor claims to have invented. The resulting dispute has not only damaged bean production, but caused a slump in US-Mexican trade.
After a long legal fight by the International Center for Tropical Agriculture (CIAT) and its partners, the patent has finally been revoked. However, concerns remain that similar legal wrangles could again threaten the public use of plant genetic resources, and put the livelihoods of small-scale farmers at risk.
A bag of beans?
The Enola bean biopiracy case dates back to 1994 when Proctor bought a bag of multi-coloured beans in a Mexican market. At home in the US, he planted a number of the beans, selecting for their uniform yellow coat. After further cultivation and selection he filed for patent protection for any beans falling within a range of yellow on the colour spectrum, when viewed in natural light. He called the variety "Enola" and he was granted US Patent No. 5,894,079 in 1999; it was later assigned to his Colorado-based seed company POD-NERS.
Under the rights of the patent, Proctor was able to claim royalties from Mexican companies exporting yellow beans to the US. Companies and farmers in the US selling this type of bean were also at risk of being sued unless they were willing to pay for a license from POD-NERS.
A challenging process
CIAT headquarters in Colombia is home to the world's largest bean collection, with over 27,000 accessions of Phaseolus seeds. Of these, 260 are yellow and six fall within the colour spectrum of the patent for 'Enola' bean. With the patent in place, there were concerns that CIAT would be unable to freely distribute yellow beans to plant breeders and researchers from around the world, who regularly access bean samples from its collection. CIAT therefore filed a request in 2000 for the Enola patent to be re-examined.
The patent was finally rejected in 2008 by the US Board of Patent Appeals and Interferences (BPAI). When POD-NERS applied to the United States Court of Appeals on 10 July 2009, the Court affirmed the decision of the BPAI to reject all claims for Enola bean.
However, whilst the efforts of CIAT and its supporting partner, the Central Advisory Service on Intellectual Property (CAS-IP) have paid off, it has been a time-consuming and costly process to fight the case. Yet despite this, CAS-IP remains determined that IP claims should not succeed in privatising plant materials that are already in widespread use, including through the CGIAR* genebanks.
Putting patent officers in the picture
Valuable lessons have been learnt from the Enola bean case and much effort is now underway to make sure that patent applications can be examined more easily in future. "One community we had not previously thought of as users of information generated by the CGIAR institutes are patent examiners," says Victoria Henson-Apollonio of CAS-IP. "For instance, in Europe we have a fantastic opportunity to provide information to examiners at the European Patent Office (EPO) by using their non-patent literature database (NPL). It doesn't cost anything; all we have to do is send documents in pdf format to the patent office."
Henson-Apollonio, who is also a US patent agent, understands the constraints of patent examiners who have little time to evaluate each application that crosses their desk. The advantage with the NPL database is that all documents sent to the patent office are indexed, coded, and assigned key words. When a patent application comes in related to beans, the examiner is able to access only relevant bean documents.
"Having this very discriminating indexing system is a really good tool for patent examiners to quickly access all the information they need," emphasises Henson-Apollonio. She adds that ICRISAT* and CIAT have already signed agreements with the EPO and it is hoped that the other international research centres of the CGIAR will soon follow suit.
As yet, no similar system exists in the US but a forthcoming meeting in Beltsville, Maryland to discuss CG germplasm databases will, for the first time, include patent examiners. She adds, "This meeting will allow us to discuss how we provide information to examiners, including pictures and descriptions, in a way that is most effective."
*CGIAR - Consultative Group of International Agricultural Research
*ICRISAT - International Crops Research Institute for the Semi-Arid Tropics
Date published: September 2009
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