The Guardian January 31, 2001


Important challenge to Mexican bean biopiracy

from Rural Advancement Foundation International (RAFI)*

"This patent has caused great economic hardship for farmers in northern 
Mexico, and we welcome attempts to overturn it", said Miguel Tachna Felix, 
spokesman for the Agricultural Association of Rio Fuerte in Sinaloa, 
Mexico, which represents 22,000 farmers in northern Mexico. Felix is 
referring to a legal challenge of a US patent on a yellow bean of Mexican 
origin.

On December 20, 2000, the International Center for Tropical Agriculture 
(CIAT  based in Cali, Colombia) filed a formal request for re-examination 
of US patent no. 5,894,079  also known as the yellow bean or "Enola bean" 
patent  at the US Patent & Trademark Office in Washington, DC.

CIAT is one of 16 international research centres supported by the 
Consultative Group on International Agricultural Research (CGIAR)  the 
world's largest network of developing country agricultural researchers.

CIAT's gene bank holds more than 27,000 samples of Phaseolus (dry bean) 
seeds, among other crop species.

"CIAT's action strikes a blow against biopiracy and protects the integrity 
of designated germplasm, which it holds in-trust for the world's farming 
community", observes Hope Shand of RAFI.

"The legal challenge is a very positive step", said Shand.

Joachim Voss, Director General of CIAT, and his staff have energetically 
pursued the patent challenge, which is also supported by the Food and 
Agriculture Organization of the United Nations (FAO).

Almost one year ago, RAFI denounced the yellow bean patent as "Mexican bean 
biopiracy" and demanded that the patent be legally challenged and revoked.

RAFI formally requested that FAO and the CGIAR investigate the patent as a 
likely violation of their 1994 Trust agreement that obliges them to keep 
designated crop germplasm in the public domain and off-limits to 
intellectual property claims.

The Enola bean patent is especially controversial because its owner, Larry 
Proctor, the president of a Colorado (USA) based seed company, POD-NERS, 
purchased yellow bean seeds in Mexico in 1994, and filed for an exclusive 
monopoly patent less than two years later.

Proctor won a US patent in April 1999 and subsequently brought legal suits 
against two companies that were selling Mexican yellow beans in the US, 
claiming that the beans infringed his monopoly patent.

According to Miguel Tachna Felix, "We had been exporting this yellow bean 
(Mayocaba) and others to the United States for over four years when POD-
NERS received their patent  based on erroneous claims.

When they got the patent they sent a letter to all the importers of Mexican 
beans in the United States, warning that this bean was their property and 
that if they planned to sell it they would have to pay royalties to POD-
NERS.

For us, this meant an immediate drop in export sales, over 90 percent, 
which affected us tremendously. And it wasn't only one bean variety, but 
also others, because it created fear among bean importers," explained 
Felix.

CIAT's official request for re-examination of US Patent No. 5,894,079, 
which includes a letter of support from RAFI, refutes all of the patent's 
15 claims as invalid.

CIAT charges that the claims fail to meet the statutory requirements of 
novelty and non-obviousness, and ignore prior art widely available in the 
literature.

The challenge is especially critical of the patent's claim of exclusive 
monopoly on any Phaseolus vulgaris (dry bean) having a seed colour of a 
particular shade of yellow, pointing out that "it will make a mockery of 
the patent system to allow statutory protection of a colour 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 six accessions are "substantially identical" to 
claims made in US patent 5,894,079.

CIAT's patent challenge also points out that the yellow bean was 
"misappropriated" from Mexico, and violates Mexico's sovereign rights over 
its genetic resources, as recognised by the Convention on Biological 
Diversity.

Miguel Tachna Felix of the Agricultural Association of Rio Fuerte and other 
farmers in northern Mexico are hopeful that the legal challenge will go 
beyond a single patent to stop biopiracy and life patenting:

"Our farmers have suffered great economic losses, but what really matters 
to us is that this legal challenge establishes a precedent to prevent 
similar injustices, so that it won't be possible to continue patenting 
public germplasm, the patrimony of all humanity, and that it will prevent 
these materials from being patented by anyone."

The US Patent & Trademark Office is expected to make a ruling on the patent 
challenge within three months.

* * *
* RAFI is an international civil society organisation based in Canada. It is dedicated to the conservation and sustainable use of biodiversity, and to the socially responsible development of technologies useful to rural societies. RAFI is concerned about the loss of agricultural biodiversity, and the impact of intellectual property on farmers and food security.

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