Blogging Biodiversity

Beans, beans, the litigious fruit…

Nearly a year ago, I wrote a post declaring that the US Board of Patent Appeals and Interferences (BPAI) had rejected Larry Proctor’s patent claims to the Enola bean. Well it turned out I was ahead of things and the BPAI hadn’t even heard the case.

I’m currently updating the presentation for which I was doing the initial research on the enola patent in preparation for speaking at the Faculty of Law of the University of Ottawa on February 20th and I have developments, this time accurate (I think), on the enola case.

First of all, the BPAI has now heard the case - on January 16th of this year as it turns out. The hearing included a rather interesting exchange between Proctor’s lawyer (Mr. Lee) and the judge. As I understand it, the claims in Proctor’s patent largely rest on the enola bean being a unique colour of yellow. As part of the re-examination of the patent, Proctor supplied samples of ‘prior art’ to the patent examiner. This prior art consists of other types of beans of a similar shade of yellow but not the same shade. Proctor (or his legal team) couldn’t, though, get access to all the prior art they had cited and the patent examiner asserted (or so says Mr. Lee) that it was up to Proctor to supply all the prior art as he has better access and facilities for this than she does:

MR. LEE: … I think her position is that she has looked at it, and yes, it is true what she has seen based on the Munsell [Book of Colour] testing we did that the prior art she has isn’t right on. It nonetheless falls upon us to find it because she doesn’t have the facilities to do it.

JUDGE GRON: But then she makes a back statement and says, But how can I really tell? Because I can’t understand what the scope of your claim is.

And then you go back and say it is what is deposited. But as we said earlier, if you get something from the deposit, it may or may not fall within the scope of your claims. Wow.

The last part of the exchange refers to an earlier discussion between Mr. Lee and the judge about how the distribution of a particular phenotypic characteristic in a given sample of seeds/plants of a particular variety will be distributed along a bell curve. The result is that any one seed in the sample of enola beans deposited with the ATCC (American Type Culture Collection) may not, when grown out, display the phenotypic characteristics that are claimed in Proctor’s patent.

The exchange brings to mind an argument I’ve made in a forthcoming publication about how patent law has attempted to assert control over living organisms even while these are still autonomous. The fact that any one seed of the patented enola bean may not actually fall within the fences erected by the patent claims - the fences that are supposed to contain the bean - seems to illustrate the point quite effectively.

The exchange also points to how the specification requirements of patent law - and the allowances for depositories that are supposed to circumvent the impossibility of fully describing living organisms - are not well-suited to the uniqueness of living organisms.

Does anyone out there know approximately how quickly the BPAI issues its decisions after a hearing has taken place? I’m guessing about 6 months. We’ll have to keep watching to see how this is decided. Even if Proctor’s claims are denied, he can still appeal further.

The other update concerns further resources related to this case. My initial post pointed to the Patent Application Information Retrieval system. This is still true, head there and search for application number 90/005,892. Then click on the tab called ‘Image File Wrapper’ and this should give you access to pdfs of the US Patent and Trademark Office’s documentation on the case. The file with the record of the BPAI’s oral hearing of the enola case from which I drew is the above quote is called ‘Miscellaneous Action with SSP’ and is dated 02-06-2008.

I’m not sure if the instructions from my March 2007 post were wrong - like some of the rest of it! - or if things have just been moved around since then.

And of course, I stand to be corrected by other experts out there if I’ve got facts related to enola patent wrong again.

Posted on February 9th, 2008 under Traditional knowledge • Print This Post • Email This Post • RSS 2.0 feed • Leave a response, or trackback

Paul Gepts:
March 29th, 2008 at 10:14 pm

Thank you for pointing out that the transcripts of the BPAI hearing on the Enola case is available from the internet. I would like to offer the following comments based on my personal experience in this case. My research group conducted DNA fingerprinting experiments on the Enola variety and other bean varieties with seeds of the same shade of yellow. Our results showed that Enola is most likely the same as the pre-existing variety Azufrado Peruano 87, developed by Mexican bean breeders with support from local farmers of the state of Sinaloa, Mexico.

The shade of yellow that is claimed in the Enola patent is fairly narrow. On the one hand, this is justified because bean consumers expect a particular shade of yellow (in this case) and not any shade of yellow. On the other hand, people should be aware that the range of variation in the shade of yellow that can be observed in the seeds of a variety like Enola is broader than what the ATCC seed sample of this same variety contains - and for a number of reasons especially in yellow bean types, more so than other types such as red kidney, tropical black, etc.

First, any phenotype is the results of the combination of genotype and environmental conditions. In a variety, one can expect limited genotypic variation (all the plants have pretty much the same genes) but more extensive environmental variation (not all plants were grown in exactly the same conditions, even when grown side-by-side in the same field). In real life, a variety will be grown under a broad range of conditions, with potential consequences for the expression of a trait such as seed color. Although the seed will be yellow regardless of the environment, there may be slight differences in shade of yellow. Furthermore, there are differences in seed color even within a plant, especially in the yellow-seeded varieties like Enola. Not all flowers open on the same day, therefore seeds of the same plant will have different ages when harvested and may, therefore show different shades of yellow.

Second, many colors of bean seeds show what is called “afterdarkening”. After harvest, seeds exposed to light will show a darkening of seed color. This is why an old lot of mixed bean seeds is predominantly dark brown, with the exception of white and black seeds. Thus, it is important to specify the age of the seeds when the color observation is made and under what condition the seeds were stored prior to the observation.

The problem is probably exacerbated for the Enola variety because the light yellow color appears to be more variable than other bean seed colors, such as reds, pinks, beige, or black. Furthermore, our genetic data (Pallottini et al. 2004. Crop Sci. 44: 968-977) show that the ATCC sample is genetically uniform in its DNA fingerprint, an unusual situation, which probably points to the fact that the harvest of a limited number of plants (one plant?) was submitted to ATCC.

Thus, I agree with your emphasis on the difficulty of using phenotypic characterization to set the boundaries of patent claims. Unlike non-living matter, which could perhaps be built to more standardized specifications, living organisms are inherently variable, even those that are clonally propagated. Furthermore, similar plant parts, such as seeds, can show differences even within a plant. What could be a solution to this problem?

Much of the problem lies with the reliance on the phenotype rather than the genotype to characterize a new cultivar. In the case of Enola, the particular yellow seed color was shown by Bassett and colleagues (Journal of the American Society for Horticultural Sciences 127:50-55, 2002) to be controlled by the same genes as a pre-existing Dutch variety. Thus, instead of characterizing the color of the seed, the genes underlying this color should be characterized. This is not as difficult as it seems as one does not actually have to isolate the genes. Routine crosses between the candidate variety and pre-existing varieties and, subsequently, observation of their progenies suffice. Yellow-seeded varieties (with the same shade of yellow) are available for free from gene banks such as the USDA bean gene bank at Pullman, WA, and the CGIAR Phaseolus gene bank in Cali, Colombia. In my experience, these organizations are eager to diligently distribute their materials to users. An alternative to crosses is to DNA-fingerprint the potential new variety and other varieties with a similar phenotype. Again similar varieties are available from the gene banks; DNA fingerprinting techniques are becoming increasingly routine. As shown in my lab (Pallottini et al. 2004. Crop Sci. 44: 968-977), these techniques can quantify the genetic distance between two cultivars and can indicate when two phenotypically similar varieties are genotypically the same or are different. I think, therefore, that a requirement of genotypic information for qualitative traits such as seed color would go a long way to alleviate some of the problems associated with varietal characterization.

Beans, beans, the litigious fruit…

One Response to “Beans, beans, the litigious fruit…”

Leave a Reply

Categories

Tags

Archives

Recent Posts

Links

Meta