Blogging Biodiversity

Attention! After writing this post, I realised that I mis-read a document and the US Board of Patent Appeals and Interferences has not yet ruled on the enola bean patent. See my mea culpa. I’m leaving the post here, however, as the rest of the history is still accurate. I’ll keep following the patent office to track new developments and let you know when a decision is actually reached. -KG, March 31st.

So I was doing a bit of research and poking around on the internet yesterday to try to find out where things currently stand with the Enola bean patent. Turns out that last Tuesday, March 13th the US Patent and Trademark Office (USPTO) rejected yet again both Larry Proctor’s original and new claims to yellow beans.

A bit of history is in order. Back in the mid-1990s, Larry Proctor bought a bag of beans at a marketplace in Mexico. Some of the beans were yellow and unlike other beans he’d seen before. He brought them back to his farm in Colorado and began growing them. He selected for the yellow-coloured beans over successive generations and named his bean ‘Enola’ after his wife’s middle name. Proctor also applied for and received, in 1999, plant variety protection and a patent on the bean. His patent was granted on the basis of the yellow colour of the bean.

Then a couple of things happened. The ETC Group (then RAFI) got a hold of the story and began to publicize it as a textbook case of biopiracy. Also, Proctor and his seed company POD-NERS began suing other growers and importers of yellow beans. This caused economic hardship for Mexican farmers who were growing beans for export and lost their market as a result of Proctor’s actions.

The problem is, yellow beans have been grown in Mexico for millennia. The International Centre for Tropical Agriculture (CIAT) in Colombia has a number of accessions of yellow beans. CIAT filed a request for a re-examination of the patent with the USPTO:

The challenge is especially critical of the patent’s claim of exclusive monopoly on any Phaseolus vulgaris (dry bean) having a seed color of a particular shade of yellow, pointing out that “it will make a mockery of the patent system to allow statutory protection of a color per se.” Although the patent owner did not obtain his yellow beans from CIAT’s gene bank, the patent challenge notes that CIAT maintains some 260 bean samples with yellow seeds, and 6 accessions are “substantially identical” to claims made in US patent 5,894,079.

A further consideration was that CIAT has an agreement with FAO to hold designated germplasm in its accessions in trust for the benefit of the international community. As part of this agreement, when CIAT transfers any of this germplasm to someone else, the Centre is to ensure that the recipient does not claim intellectual property protection over the germplasm. While Proctor did not obtain his beans from CIAT, the Centre was nonetheless concerned that Proctor’s patent violated its obligation under the agreement with FAO and would prevent the Centre from freely distributing its bean varieties.

Subsequent research showed that the genetic fingerprint of Proctor’s patented bean was nearly identical to that of “pre-existing Mexican Peruano-type cultivars”.

So in December 2000, CIAT filed its request for re-examination. In response, Proctor filed 43 new patent claims. The time line since then looks something like this:

December 2003: USPTO ‘non-final’ rejection of patent
April 2005: USPTO ‘final’ rejection of patent
October 2005: Proctor submits Request for Continued Examination of patent
December 2005: Another USPTO ‘final’ rejection of patent
March 2006: Proctor appeals the final rejection
March 2007: US Board of Patent Appeals and Interferences upholds the rejection of the original patent claims and the new patent claims.

The story still isn’t necessarily over as Proctor can appeal the Board’s decision to the Court of Appeals for the Federal Circuit or a district court. It is also possible that the dispute could go to the US Supreme Court although I somehow doubt that it will get this far.

This story raises a whole number of issues:
- the extent to which the USPTO will consider prior art from outside the United States;
- the relative ease of getting a patent versus the onerous burden of trying to overturn one;
- whether the existence of some sort of certificate of origin/source/legal provenance system would have prevented the issuance of the patent in the first place; and
- what impact the International Treaty on Plant Genetic Resources for Food and Agriculture might have on this story.

I won’t go into each of these but on the second point, it has been over ten years since Proctor applied for his patent and almost eight years since it was granted. The patent is considered valid while the re-examination process is ongoing so even if Proctor gives up his challenges now, he has already benefited from a lengthy - and unwarranted - period of exclusivity.

In addition, the re-examination may not have happened had CIAT not filed the request. The onus is therefore on institutions such as CIAT or the government of the country where the resources were accessed - in this case Mexico - to make sure genetic resources are not being misappropriated. Neither these institutions or countries necessarily have the capacity to engage in such a monitoring exercise.

One final point is that it seems fairly evident that Proctor’s accessing of the beans was contrary to the CBD - although there could be some debate as to whether he was accessing genetic resources or accessing biological resources. What impact have his actions had on the conservation and sustainable use of biodiversity? I don’t have any specific information on this but I can offer some theories.

Certainly, Proctor’s work points to the value of biodiversity. As his selective breeding of the beans went on, he found that “the roots ran deeper than other bean plants; the pods were more hardy, more resistant to moisture.” But his attempts to keep the value of the biodiversity to himself could be counter-productive to protecting biodiversity. With no benefits returning to Mexico, the incentives for the country and its farmers to protect biodiversity are diminished. Indeed, by economically harming Mexican farmers by trying to prevent the importation of yellow beans to the US, Proctor could be harming biodiversity if the farmers are forced to turn to more environmentally-harmful ways of earning a living. On the other hand, if the farming of yellow beans for export became very lucrative, this could also harm biodiversity if fields are devoted to monocultures of yellow beans with other varieties abandoned.

Definitely lots of food for thought.

Further resources:
From ETC Group -
“Mexican Bean Biopiracy” (15 January 2000)
“Enola Bean Patent Challenged” (5 January 2001)
“Whatever Happened to the Enola Bean Patent Challenge?” (21 December 2005)

Sandy Tolan, “A Bean of a Different Color” (NPR News and American RadioWorks, 2001).

US Patent No. 5,894,079, “Field bean cultivar named enola”.
- to find the current status of the patent, search the ‘Patent Application Information Retrieval’ system and, once you find the Enola patent, click on the tab with the ‘continuity data’.

Posted on March 19th, 2007 under ABS, CBD, FAO, Intellectual property •  Print This Post •  Email This Post • RSS 2.0 feed • Leave a response, or trackback