Fighting for Fair Use of Plant Genetic Resources

A nearly 8-year effort to redress a notorious act of biopiracy finally achieved its objective on April 29, 2008, when the United States Patent and Trademark Office (USPTO) announced it was definitively rejecting all patent claims for a yellow-seeded variety of common bean named 'Enola'.

The International Center for Tropical Agriculture (CIAT), which has a world mandate for common bean improvement within the CGIAR, took up a legal challenge to the patent in late 2000. The Center's efforts to reverse the patent have received significant coverage in the international media and helped arouse concern worldwide about predatory intellectual property claims on plant materials originating in the developing world.

"We are happy that the patent office has reached a final decision in this case but remain concerned that the patent reexamination procedure meant that these patent claims remained in force for such a long time," said CIAT Director General Geoff Hawtin. "For several years now, farmers in Mexico, the USA and elsewhere have unnecessarily endured legal threats and intimidation for simply planting, selling and exporting a bean that they have been growing for generations."

The importance of eliminating such abuses seems especially obvious, he explained, in the face of today's global food price crisis. More than ever, developing countries must have free access to plant genetic resources that are vital for bolstering food security and adapting agriculture to the impacts of climate change.

Crying Foul

In 1994, Colorado seed producer Larry Proctor bought a package of dry beans in a market in Mexico and took them to the USA without obtaining an export permit from Mexican authorities. Using yellow seeds selected from the package, Proctor then planted bean crops for 3 years in succession. By 1999, he had obtained a 20-year patent for the beans, claiming he had developed "a new field bean variety that produces distinctly colored yellow seed."

Soon afterwards, the ETC Group, a Canada-based nongovernment organization, cried foul, denouncing the maneuver as an egregious violation of international agreements aimed at keeping the use of plant genetic resources free of restriction. What particularly outraged civil society critics was that Proctor used the patent to block importation of yellow beans by Mexican farmers who had been growing and marketing them for decades.

CIAT responded by filing a request for reexamination of the Enola bean patent through the law offices of Dodds Associates in Washington, D.C. Under USPTO rules, published information that was not brought to the attention of a patent examiner can be used to reverse a patent already granted.

Several concerns prompted CIAT to pursue that course. One was the immediate economic impact of the Enola patent on the Mexican farmers who had been exporting yellow beans to the USA. Looking to the future, Center scientists also worried that the patent would establish a bad precedent, opening the way for further encroachment on public access to plant genetic resources, which are vital for sustainable agricultural development.

Fair Play

A 1994 agreement with the Food and Agriculture Organization (FAO) of the United Nations obligates CIAT to hold so-called "designated" bean samples stored in its genebank in trust for humanity and to distribute these to others "without restriction" for research, plant improvement and conservation. The agreement further stipulates that, when transferring germplasm to individuals and institutions, CIAT will ensure that they do not "claim legal ownership" of the material or "seek any intellectual property rights" to it. In 1995, the Center developed a Material Transfer Agreement spelling out those terms and from then on distributed germplasm samples only to parties willing to sign the agreement.

But the bean germplasm from which Enola derived was not obtained from the CIAT genebank under such an agreement. So, how did Proctor's patent represent a violation of the arrangement with FAO? In answering that question, the genebank's manager, Daniel Debouck, refers to a second joint statement signed by FAO, CIAT and other CGIAR Centers in 1998, indicating that "the Center will request and urge that no intellectual property rights be sought for designated germplasm that was distributed before its designation under the FAO-CGIAR agreement."

CIAT's request for reexamination of the Enola patent had exactly that aim. In disputing Proctor's claims to a particular color of bean, the Center provided evidence that, of the more than 28,000 "designated" common bean samples stored in its genebank, at least six with sulfur-yellow seeds matched the description of Enola presented in Proctor's patent. Center researchers also pointed out that common beans of exactly the same hue have been grown and consumed in the Americas since pre-Columbian times, a fact documented in numerous scientific publications dating back to the early 20th century.

Genetic studies carried out subsequently, with the use of molecular markers, have shown that Enola is identical to the Mexican cultivar 'Azufrado Peruano 87'. Far from "inventing" the Enola bean, the patent holder had merely appropriated a product of publicly funded plant breeding in Mexico. That work, in turn, had involved both local and Peruvian bean genetic resources (with names like Mayocoba, Canario and Peruano), samples of which are stored in the CIAT genebank.

In filing for reexamination of Proctor's patent, CIAT was thus acting in accordance with the terms of an international agreement designed to prevent precisely the kind of abuse the patent represented.

Legal Labyrinth

Despite the weight and clarity of the evidence presented by CIAT, Proctor actively enforced his patent. His claim of US$0.6 on every pound of yellow beans sold in the USA caused a steep decline in the importation of such beans from Mexico, according to Mexican government sources.

The USPTO issued a preliminary decision in 2003, rejecting all the patent claims, and then announced a final rejection in December 2005. But Proctor filed an appeal in accordance with USPTO rules, and the patent remained in force while the appeal was being considered by the Board of Patent Appeals and Interferences. Proctor can still appeal the USPTO decision in the US federal courts, all the way to the Supreme Court. But that would be a costly process; if he chose to pursue it.

"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 crop varieties that have been in cultivation 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. Also, agricultural researchers have a responsibility to make sure that publications are easily available to patent examiners."

Biopirates Beware

The CIAT genebank is one of 11 supported by the CGIAR around the world. Together, they safeguard a total of about 600,000 samples of crop, forage and agroforestry species. The collections include traditional varieties of staple foods, developed through many years of selection by farmers; wild plants related to domesticated species; crop breeding lines; and improved crop varieties, like Mexico's 'Azufrado Peruano 87'.

The conservation and use of such materials is now guided by the International Treaty on Plant Genetic Resources for Food and Agriculture. Emerging after years of difficult negotiations, the treaty went into effect during 2004. Within that framework, the CGIAR Centers signed new agreements with FAO in 2006, perpetuating the in-trust status of the 11 collections held at the Centers. The treaty calls for the establishment of a multilateral system designed to facilitate access to plant diversity and fair sharing of benefits from its use. The conditions for accomplishing those purposes are spelled out in a Standard Material Transfer Agreement. By mid-2007, the CGIAR Centers had distributed nearly 100,000 plant samples under that agreement.

CIAT's challenge of the Enola bean patent sends a signal - a kind of warning shot fired across the bow of any would-be biopirate - that the CGIAR is determined to uphold both the letter and the spirit of its agreements with FAO. To meet that commitment requires ongoing efforts to ensure that intellectual property claims do not falsely seek to privatize plant materials that are already in widespread use.

"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 traditional variety for over a hundred years will not wake up one day to discover that it has suddenly become someone else's intellectual property," said Victoria Henson-Apollonio, manager of the CGIAR Central Advisory Service on Intellectual Property, which is charged with helping the Centers handle such cases.

Related Links:

• The International Center for Tropical Agriculture (CIAT)