Enola bean patent dispute offers lessons for developing countries

The yellow 'Enola' bean has been grown by Mexican farmers for centuries but in 1999, a US company director managed to secure a patent on it and prevent import into the US of these yellow beans. Although the patent has now been ruled invalid as a result of court action, the whole episode has serious implications for developing countries seeking to protect their genetic resources.

Sangeeta Shashikant & Asmeret Asghedom

Issue No. 231/232 (Nov/Dec 2009)

FOR the last decade the patent on the yellow 'Enola' bean held by the owner of a US-based seed company has been wreaking havoc on farmers, bean importers and exporters in Mexico and the United States. In July, the US Court of Appeals for the Federal Circuit delivered a decision that should put an end to the devastation.

Soon after Larry Proctor won the patent in 1999, he charged that Mexican farmers were infringing his rights by selling yellow beans in the US, and shipments were stopped at the border. Proctor also sued seed companies and farmers selling or growing the Mexican yellow beans in the US.

On 10 July, the US Court of Appeals ruled Proctor's patent invalid for failing to meet the patent criterion of non-obviousness. The court merely reaffirmed what experts, activists and farmers had asserted for a decade, namely, that the Enola bean patent was erroneous and blatantly invalid since the bean has been grown and eaten in Mexico for centuries.

The court decision came after a decade-long battle that involved previous rejections by the US Patent and Trademark Office (USPTO) and by the Board of Patent Appeals. Throughout the dispute, Proctor maintained a monopoly, which allowed him to exert his power over farmers and bean importers and exporters through countless lawsuits, threats and customs inspections. And despite obvious predatory abuses resulting in significant losses for farmers, there will be no compensation.

The Enola bean dispute is but one of the many disputes that have emerged since the coming into force of the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). It is an indictment of the workings of the current patent system as it is practised in the developed countries.

Kathy Jo Wetter from the non-governmental ETC Group (Action Group on Erosion, Technology and Concentration) has charged that the 'patent system is broken on both sides of the Atlantic', following her assertion that 'We've seen protracted patent battles before. It was just last year that the European Patent Office struck down Monsanto's species-wide patent on all genetically modified soybeans but it took an appeal and 13 years.'

The Enola bean dispute is also a warning to developing countries of what the future may hold. Developing countries are increasingly being pressured, through initiatives in such fora as the World Intellectual Property Organisation (WIPO) and trade agreements, to adopt the patent standards and practices of the developed countries.

Against the backdrop of an advanced 'maximalist' intellectual property (IP) agenda, with widespread patenting of seeds, plant and animal varieties and species, corporate monopoly over genetic resources and an aggressive push for IP enforcement measures taking place, Enola bean-type cases are likely to become the norm.   

Patenting Enola   

The Enola bean story began in Sonora, Mexico in 1994, when Proctor, the President of Pod-ners LLC, purchased a bag of commercial seeds. Proctor took the bag to his home in Colorado, planted the seeds and allowed them to self-pollinate. He selected the yellow seeds for several generations until he got what he described as a 'uniform and stable population' of yellow seeds. On 15 November 1996, two years after purchasing the seeds, Proctor applied for a US patent.

Proctor was granted US patent no. 5,894,079 on the 'Enola' bean variety on 13 April 1999. The scope of the exclusive monopoly covered all Phaseolus vulgaris (dry bean) having a seed colour of a particular shade of yellow. Proctor then proceeded to obtain double protection on his Enola bean variety by applying for a US Plant Variety Protection Certificate.

In the application, Proctor claimed that the Enola variety was unique because it was of a distinctive yellow colour and was not previously grown in the US. However, in the application Proctor admitted, 'The yellow bean, "Enola" variety is most likely a landrace from the azufrado-type varieties.' Despite that fact, Proctor was granted a US Plant Variety Protection Certificate on 28 May 1999 on the basis that the Enola dry bean variety was a distinct colour and was unlike any other bean produced in the US.

Armed with the double protection, Proctor's company Pod-ners demanded that exporters pay royalties of 6 cents per pound of yellow beans entering the US from Mexico.

In late 1999 Proctor sued two companies, Tutuli Produce in the US and Productos Verde Valle located in Mexico, that bought beans from Mexican farmers and sold them in the US. The companies were shocked by the allegations. ETC Group reports Rebecca Gilliland, President of Tutuli Produce, as stating, 'In the beginning, I thought it was a joke. How could he [Proctor] invent something that Mexicans have been growing for centuries?'

Proctor also used his patent to disrupt bean trade between Mexico and the US and attempted to block exports that he believed contained his patented variety. US customs officials inspected Mexican beans transported between the Mexico-US border and detained samples from each shipment. The lost bean samples, coupled with the delays in shipment and fears from importers that the shipments would not come in time or at all, presented additional costs to companies. Gilliland said that her company lost customers because of the lawsuit, which also adversely impacted Mexican farmers whose livelihoods depended on selling beans to seed exporters.

According to Miguel Tachna Felix of the Agricultural Association of Rio Fuerte, Mexico, when Pod-ners got the patent a letter was sent to all importers of Mexican beans in the US warning that the bean was its property and that if they planned to sell it they would have to pay royalties. This resulted in an immediate drop in export sales and created fear among bean importers.

Along with farmers, community members in some areas of Mexico were also threatened by Proctor's monopoly since beans are one of Mexico's basic staple foods and the principal source of vegetable protein. According to ETC Group, 98% of surveyed Mexicans in the northwest region eat the yellow 'Azufrado' bean.

The Mexican government was outraged by the appropriation of the yellow bean variety and by the attempts to block exports. In January 2000 the government announced that it would challenge the patent. 'We will do everything necessary, anything it takes, because the defence of our beans is a matter of national interest,' said Jose Antonio Mendoza Zazueta, under-secretary of Mexican rural development, according to ETC Group reports. 

In the midst of the outrage expressed by Mexican officials, farmers and exporters, Proctor in a shocking move went on to file a lawsuit against 16 small US bean seed companies and farmers in Colorado on 20 November 2001 on the basis that they were violating the patent by illegally growing and selling his yellow Enola bean.   

Illegitimate patent   

The Enola bean patent was condemned by experts worldwide as substantial evidence existed to show that Proctor was not the inventor of the yellow bean variety and that the bean originated from Mexico.

Mexico's National Research Institute for Agriculture, Forestry and Livestock (INIFAP) had evidence that the yellow bean was genetically identical to Mexico's Azufrado bean.

Professor James Kelly, a bean breeder at Michigan State University and President of the Bean Improvement Cooperative, is reported as calling the Enola bean patent 'inappropriate, unjust and not based on the scientific evidence or facts', since '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 colour'.

In fact, the database at the International Center for Tropical Agriculture (CIAT) in Cali, Colombia contains Mexican bean varieties identified by those names and categorised as 'in-trust' material. ('In-trust' germplasm is germplasm maintained in the public domain, with intellectual property claims not allowed under the terms of a 1994 agreement between the Consultative Group on International Agricultural Research and the UN Food and Agriculture Organisation.)

According to ETC Group, CIAT's gene bank holds more than 27,000 samples of Phaseolus (dry bean) seeds, among other crop species. Additionally, CIAT maintains some 260 bean samples with yellow seeds, and six accessions are 'substantially identical' to claims made in Proctor's patent.

'All he [Proctor] did was multiply something that already existed,' Kelly told ETC Group. 'It's nothing unique in any sense of the word. To patent a colour is absolute heresy.' Kelly asserted, 'Nothing unique was invented, and this is a routine procedure used by bean breeders to maintain purity of genetic stocks and varieties.'

ETC Group also reports Kelly as having provided seed companies with evidence proving the patent's illegitimacy. In a letter written in December of 1999 and addressed to Humberto Valdivia, Manager of Productos Verde Valle, Kelly dismissed the validity of the patent on the basis that yellow beans similar to Enola had been grown in the US as far back as the 1930s.   

Legal challenges   

Proctor's patent has been disputed by multiple legal challenges since 2000. However, pending resolution of the matter, Proctor was able to enjoy monopoly of the market and force farmers and other entities to pay royalties, disrupting cross-border trade and causing massive economic losses for farmers.

On 20 December 2000, CIAT filed a formal request for re-examination of the US patent. The request disputed all the patent claims as being invalid and charged that the misappropriation of the bean variety violated Mexico's sovereign rights over its genetic resources as recognised by the Convention on Biological Diversity.

However, re-examination was delayed when Proctor's lawyers amended the original patent by filing 43 new claims. The process was further complicated when the USPTO merged the re-examination proceedings with the re-issue proceedings. This delayed a final decision.

In late 2003, the USPTO's re-examination resulted in a 'non-final' rejection of the patent.Despite  overwhelming evidence of the patent's invalidity, however, Proctor was able to continue his patent monopoly over the yellow bean variety.

A 'final rejection' for all of the patent's 64 claims was released by the USPTO on 14 April 2005. However, Proctor was allowed six months to prepare and file a request to extend the re-examination period. On 14 October 2005, Proctor filed his request to extend the re-examination period and was awarded a three-month reprieve.

On 21 December 2005, the USPTO issued another 'final rejection' in response to Proctor's amendment of the patent claims. But once again, the patent office allowed Proctor to file another extension or take the case to a higher board of appeals.

Proctor appealed, but the Board of Patent Appeals ruled the patent invalid in April 2008.

Proctor attempted to overturn this ruling in the US Court of Appeals for the Federal Circuit. But at last, the court issued the fifth and final rejection and revoked Proctor's patent on the Enola bean variety on 10 July 2009.

According to a news release from ETC Group, the court's seven-page decision argues that anyone intending to reproduce or improve Mexican yellow beans would have done exactly what Proctor did: plant the beans, harvest the resulting plants for their seeds, plant the latter seeds, and repeat the process two more times. Thus the invention was 'obvious' and not deserving of a patent.

For developing countries, the Enola bean dispute and other similar patent challenges involving genetic resources raise the need for the following measures: (i) to urgently revive the long-overdue review of Article 27.3(b) of the TRIPS Agreement, which allows granting of patent protection for lifeforms including microorganisms; (ii) to urgently impose a mandatory requirement for disclosure of the origin of genetic resources in patent applications; and (iii) to resist anti-counterfeiting initiatives that burden governments to take on IP enforcement obligations that go beyond the minimum requirements of the TRIPS Agreement and to limit the scope of 'counterfeiting' and border measures to trademark and copyright violations.        

*Third World Resurgence No. 231/232, November-December 2009, pp 41-43