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4-Patents: US-Mexico legal battle erupts over patented bean



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TITLE:  Mexican bean biopiracy
        US-Mexico legal battle erupts over patented "Enola"
SOURCE: RAFI, Canada, Geno-Types, http://www.rafi.org
DATE:   January 17, 2000

----------------- archive: http://www.gene.ch/ ------------------


Mexican bean biopiracy
US-Mexico legal battle erupts over patented "Enola"
Bean plant breeders' wrongs continues

Please see posting on RAFI's web site to find full citations and
sources for this article.

Summary:
A US-based company, POD-NERS, L.L.C, is suing Mexican bean
exporters, charging that the Mexican beans (Phaseolus vulgaris)
they are selling in the US infringe POD-NERS' US patent on a
yellow-colored bean variety. It's not surprising that the Mexican
beans are strikingly similar to POD-NER's patented bean. That's
because POD-NERS proprietary bean, "Enola" originates from the
highly popular "Azufrado" or "Mayocoba" bean seeds the company's
president purchased in Mexico in 1994. The Mexican yellow beans
have been grown in Mexico for centuries, developed by generations
of Mexican farmers and more recently by Mexican plant breeders.
Last year RAFI released a report, Plant Breeders' Wrongs, which
documents 147 suspected cases of institutional biopiracy. In
RAFI's opinion, the Enola bean patent is a textbook case of
biopiracy, and it confirms - once again -- that the plant
intellectual property system is predatory on the rights of
indigenous peoples and farming communities!


Background

In 1994, Larry Proctor, the owner of a small seed company and
president of POD-NERS, L.L.C., bought a bag of commercial bean
seeds in Sonora, Mexico and took them back to the US. He picked
out the yellow-colored beans, planted them and allowed them to
self-pollinate. Proctor selected yellow seeds for several
generations until he got what he describes as a "uniform and
stable population" of yellow bean seeds. Proctor applied for a US
patent on November 15, 1996, barely two years after he purchased
the yellow beans in Mexico.

- On April 13, 1999 Larry Proctor won US patent no. 5,894,079 on
the "Enola" bean variety. The patent claims exclusive monopoly on
any Phaseolus vulgaris (dry bean) having a seed color of a
particular shade of yellow. POD-NERS claims that it is illegal
for anyone to buy, sell, offer for sale, make, use for any
purpose including dry edible or propagation, or import yellow
Phaseolus vulgaris of that description. (To be granted a patent,
the inventor must meet three standard criteria. The invention
must be new, useful and non-obvious. )

- On May 28, 1999 Larry Proctor won a US Plant Variety Protection
Certificate (No. 9700027) on the Enola bean variety. The PVP
certificate states that the Enola dry bean variety "has
distinctly colored seed which is unlike any dry bean currently
being produced in the United States" (To receive plant variety
protection in the US, a variety must be new, stable, uniform and
distinct.)

In late 1999, armed with a US patent and a breeders' right
certificate (double IP protection), Proctor brought legal suit
against two companies that sell Mexican beans in the US, charging
that they infringe his patent monopoly. Proctor has initiated
legal suits against two companies that buy yellow beans from
Mexican farmers and sell them in the US: Tutuli Produce (Nogales,
Arizona, US) and Productos Verde Valle (Guadalajara, Jalisco,
Mexico). Rebecca Gilliland, President of Tutuli Produce,
explains, "In the beginning, I thought it was a joke. How could
he [Proctor] invent something that Mexicans have been growing for
centuries?" Tutuli Produce is a major buyer of two yellow bean
varieties, "Peruano" and "Mayocoba" produced by an association of
Mexican farmers, the Asociacion de Agricultores de Rio Fuerte.

POD-NERS is demanding royalties of six cents per pound on the
yellow beans entering the US from Mexico. According to Gilliland,
because of the patent infringement charges, US customs officials
are now inspecting Mexican beans at the US-Mexico border, taking
samples from every shipment, at additional cost to her company.
And because of the lawsuit, Gilliland says her company is already
losing customers - which are important markets for Mexican
farmers.


Mexico Defends its Bean Heritage

Beans are the principal source of vegetable protein consumed by
Mexicans, and one of Mexico's basic food staples. Yellow
"Azufrado" beans are especially popular in the Northwest region
of Mexico where 98% of surveyed Mexicans eat them.

Outraged by the appropriation of Mexican germplasm and legal
attempts to block Mexican bean exports to the US, the Mexican
government announced in early January that it will challenge the
US patent on the "Enola" bean variety. "We will do everything
necessary, anything it takes, because the defense of our beans is
a matter of national interest," declared Jose Antonio Mendoza
Zazueta, under-secretary of Mexican rural development. The patent
challenge will cost at least US$200,000 in legal fees.

Mexico's National Research Institute for Agriculture, Forestry
and Livestock (INIFAP) recently conducted a DNA analysis of POD
NERS' patented bean. The results indicate that the Enola variety
is genetically identical to Mexico's "Azufrado" bean.


Nothing New

Larry Proctor, the "inventor" of the Enola variety, readily
admits that his Enola bean is of Mexican origin. On his
application to the PVP office, Proctor wrote, "The yellow bean,
'Enola' variety is most likely a landrace from the azufrado-type
varieties." In his patent application, Proctor explains that he
bought a bag of commercial beans in Mexico, planted them in
Colorado (US), and did several years of selection. But Proctor
claims that the Enola variety he developed is unique because of
its distinctive yellow color and also because it was not grown
previously in the US.

Plant breeding experts disagree. Professor James Kelly, a bean
breeder at Michigan State University and President of the Bean
Improvement Cooperative, believes that the Enola patent is
"inappropriate, unjust and is not based on the scientific
evidence or facts."

Kelly writes: "This yellow color described in the patent is
typical of the yellow beans that have been grown for centuries in
Mexico. The yellow beans in Mexico are widely grown and known
under the names of Mayocoba, Azufrado or Sulfur, Peruano, Canaria
and Canario, names that are all suggestive of the yellow color."

There is ample documentation in genebank databases that bean
varieties commonly known as Azufrado, Canario and Peruano are
farmers' varieties collected in Mexico. RAFI's initial database
search reveals that scores of Mexican bean varieties identified
by those names are held by the International Center for Tropical
Agriculture (Cali, Colombia), and virtually all of them are
designated "in-trust" materials. Under the terms of the 1994
agreement between the Consultative Group on International
Agricultural Research and the UN Food and Agriculture
Organization, "in trust" germplasm is maintained in the public
domain and is not allowed to be included in any intellectual
property claim (see list of Azufrado bean varieties - Appendix
1).

Professor James Kelly dismisses the implication that the patented
yellow color bean was not known, grown or recognized in the US
prior to 1994. Kelly provides documented evidence that yellow
beans (of Mexican origin) similar to Enola were grown and
consumed in the US as far back as the 1930s.

Kelly also questions the technical validity of the breeding and
selection work described in the Enola patent:

"On a scientific level, I would challenge the procedure they used
as not being unique since beans are highly self-pollinating and
they (inventors) simply grew pure homozygous seed of yellow beans
from a seed mixture which self pollinated to reproduce itself.
Nothing unique was invented, and this is a routine procedure used
by bean breeders to maintain purity of genetic stocks and
varieties. The inventors state 'a segregating population of
plants resulted.' This is incorrect. They simply observed
different plant and seed types since they planted a mixture of
different beans that exhibited morphological, phenological and
seed color differences. This is not a segregating population
which must result from a cross pollination. Simply growing and
selfing a specific seed color type hardly implies novelty or
invention." (emphasis added).

" All he [Proctor] did," Kelly told RAFI, "was multiply something
that already existed. It's nothing unique in any sense of the
word. To patent a color is absolute heresy."


The Bottom Line: RAFI Commentary

The Enola bean patent is technically and morally unacceptable. It
is tragic that Mexico is now forced to devote scarce financial
resources to challenge a patent that should never have been
granted. It's difficult to decide who is more at fault: Is it the
patent owner who claims that Mexican beans are infringing his US
monopoly patent on seeds of Mexican origin? Or is it the US
patent examiners who determined that Proctor was eligible to win
an exclusive monopoly patent?

It is tempting to dismiss the Enola bean patent as an
"aberration", as nothing more than an absurdly ridiculous patent.
Unfortunately, the patent demonstrates more than the fallibility
of a single patent examiner. Last year RAFI released a report,
"Plant Breeders' Wrongs" which documents 147 suspected cases of
institutional biopiracy. Industry and Plant Breeders' Rights
officials from Canberra to Geneva dismissed the charges,
asserting that plant intellectual property abuses are remote and
isolated cases. The reality is that the Enola patent is only the
most recent example of a long line of abuses - of "systemic
biopiracy." Mexican beans, South Asian basmati, Bolivian quinoa,
Amazonian ayahuasca, Indian chickpeas - all have been subject to
intellectual property claims that are predatory on the knowledge
and genetic resources of indigenous peoples and farming
communities.

The Enola controversy starkly illustrates the danger of life
patenting and the power of exclusive monopoly patents to block
agricultural imports, to disrupt or destroy export markets for
Third World farmers, and to legally appropriate staple food crops
or sacred medicinal plants that represent the cultural heritage
of millennia. Hopefully, the Enola patent will be easily
challenged and promptly abandoned. But next time, it may not be
so simple. The patent owner could be a corporate powerhouse with
deeper pockets and a fleet of lawyers.

Mexico and other nations of the South should bear in mind that
the Enola patent is the product of precisely the same
intellectual property regime that the US government aggressively
promotes as a model for the rest of the world, through bilateral
and multilateral channels. At the World Trade Organization, the
US consistently pushes for stronger IP protection for plant
varieties under the Trade-Related Intellectual Property (TRIPs)
agreement. It is a tragic irony if Mexico and other governments
react to biopiracy by rushing to patent and PBR every plant
variety in sight. In doing so, they will put in place the very
same predatory IP regimes that undercut the rights of farmers to
save seeds, promote genetic uniformity, and threaten food
security.


Action Needed

- US Patent 5,894,079 should be legally challenged and revoked.

- US Patent 5,894,079 and US PVP # 9700027 may involve "in trust"
germplasm. Under the terms of the 1994 agreement between the
Consultative Group on International Agricultural Research and the
UN Food and Agriculture Organization, "in trust" germplasm is
maintained in the public domain and is not allowed to be included
in any intellectual property claim. To insure the integrity of
designated germplasm, FAO and CGIAR should take immediate steps
to investigate, and, if necessary, to offer legal and financial
support to defend the in-trust germplasm.

- The long-overdue review of WTO TRIPs Article 27.3(b) is
ultimately the most important forum for halting predatory
practices. Governments should rescind the current requirement
under Article 27.3(b) to permit intellectual property protection
for plants and microorganisms on the grounds that WIPO and UPOV
regimes are predatory upon the knowledge of farming communities
and indigenous peoples and upon the sovereignty of states over
their living resources.

- Governments, civil society organizations and other stakeholders
convening at the Global Forum on Agricultural Research in Dresden
in May should urgently review the impact of plant intellectual
property on plant breeding and innovation, farming communities
and biological diversity.


Appendix 1

Does the 'Enola' patent and PBR violate the FAO In-Trust
Agreement?

 "The yellow bean, 'ENOLA' variety, is most likely a landrace
from the azufrado-type varieties." -- From the application for US
Plant Variety Protection Certificate # 9700027 on the Enola bean
variety.

The following table gives only a partial sampling of AZUFRADO
varieties held in CIAT's international bean collection. ALL ARE
DESIGNATED IN-TRUST ACCESSIONS. All are farmers' varieties
collected in Mexico. Source: CGIAR Systemwide Information System
for Genetic Resources (SINGER) database (http://singer.cgiar.org)

Accession Identifier    CGIAR Singer #    USDA #     Origin 

AZUFRADO                CIATBEAN-G91      PI150941   Mexico
AZUFRADO                CIATBEAN-G817     PI197689   Mexico
AZUFRADO                CIATBEAN-G862     PI1201940  Mexico
AZUFRADO                CIATBEAN-G863     PI1201941  Mexico
AZUFRADO                CIATBEAN-G1818    PI1309802  Mexico
AZUFRADO                CIATBEAN-G1823    PI1309808  Mexico
AZUFRADO                CIATBEAN-G1824    PI1309810  Mexico
AZUFRADO                CIATBEAN-G1804    PI1309783  Mexico
AZUFRADO                CIATBEAN-G1807    PI309787   Mexico
AZUFRADO                CIATBEAN-G1808    PI1309788  Mexico
AZUFRADO                CIATBEAN-G1814    PI1309797  Mexico
AZUFRADO                CIATBEAN-G1815    PI1309799  Mexico
AZUFRADO                CIATBEAN-G2250    PI1311895  Mexico
AZUFRADO                CIATBEAN-G2254    PI1311899  Mexico
AZUFRADO                CIATBEAN-G2843    PI1319649  Mexico
AZUFRADO                CIATBEAN-G2868    PI1319678  Mexico
AZUFRADO                CIATBEAN-G2877    PI11319687 Mexico
AZUFRADO                CIATBEAN-G3456    none       Mexico
AZUFRADO Mayo           CIATBEAN-G405     PI1312095  Mexico
AZUFRADO del Yaqui      CIATBEAN-G2403    PI1312093  Mexico
AZUFRADO Bolito         CIATBEAN-G2406    PI1312096  Mexico
AZUFRADO Vallarta       CIATBEAN-G1804    PI1309783  Mexico
AZUFRADO Amarillo       CIATBEAN-G21150   PI1309797  Mexico
AZUFRADO Blanco         CIATBEAN-G1815    PI1309799  Mexico
AZUFRADO del Rio        CIATBEAN-G2251    PI1311896  Mexico
AZUFRADO de la Sierra   CIATBEAN-G2253    PI1311898  Mexico


Please note new address, phone and fax:

Hope Shand, Research Director RAFI
118 E. Main St., Rm.
211 Carrboro,
NC 27510

tel: 919 960-5223
fax: 919 960-5224
email: hope@rafi.org
http://www.rafi.org 


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