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US-Mexico Legal Battle Erupts
over Patented "Enola" Bean
Rural Advancement Foundation International (RAFI) release
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. In RAFI's opinion, the Enola bean patent is a textbook case of biopiracy, and it confirms-once again-that the plant intellectual property (IP) system is predatory on the rights of indigenous peoples and farming communities.
"I thought it was a joke. How could he invent something that Mexicans have been growing for centuries?"
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 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.
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.
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."
"To patent a color is absolute heresy."
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.
" 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 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.
To find full citations and sources for this article, see the posting on RAFI's web site: http://www.rafi.org/
A popular article ran in The Wall Street Journal, 20 March 2000, "As Two Men Vie to Sell Yellow Beans, Litigation Sprouts," by Jonathan Friedland.