Fbae Logo
Home | | Support Us | Contact Us
Goals & Objectives Our Position False Propaganda Special Topics Important Publications Important Links Events news Biosafety
Fbae Header Home




Fitting Traditional Knowledge and Biopiracy into the Existing Intellectual Property and Unfair Competition Framework
Charles R. McManis Thomas & Karole Green
Professor of Law
Washington University,
St. Louis, U.S.A.

Excerpts from Ch. 12 in BURTON ONG (ed.)
(Marshall Cavendish Academic, 2004)

The Enola Bean Patent—
Of all the high-profile biopiracy controversies stimulated by U.S. patents, the most serious is the one generated by Patent No. 5,894,079, a utility patent on a yellow bean derived from (if not identical with) a bean that Mexicans and other Latin Americans have been eating (and growing) for centuries.1 Named the Enola Bean, based on the middle name of the patent holder’s wife,2 the bean was supposedly developed from a bag of dry beans that, according to the patent, were purchased and brought over from Mexico in 1994.3 However, the patent holder’s patent lawyer concedes that the date recited in the patent is "an unfortunate error, since the beans were actually brought over in 1991."4 That error turns out to have been indeed unfortunate (and causes one to wonder why the patent holder retains that attorney if it was he who allowed such an error to slip into the patent), as the patent holder apparently would not have been physically able to produce a new variety in the time specified in the patent.5 If that is indeed the case, one wonders whether this patent should have issued at all. Thus, many reputable academic and other public-sector researchers, not just RAFI, suspect that the patent holder may have simply given the bean a new name and gotten patent rights that the patent holder is now using to exclude imports of yellow beans from Mexico.6 It is little wonder that CIAT has decided to challenge the Enola bean patent.7

But the patent holder may be playing an exceedingly dangerous game, as he is attempting, on the one hand, to argue (in order to defend the patent’s validity) that his patented bean is distinguishable from Mexican yellow beans, but have nevertheless brought an infringement proceeding against importers of Mexican yellow beans.8 To the suspicious eye, this looks like the patent holder is trying to have it both ways. 9 Together with the "unfortunate error" in the patent about the date the progenitor beans were supposedly brought over from Mexico, the behavior of the patent holder begins to give off the unsavory aroma of possible patent misuse, particularly as Mexico has claimed that a process of "genetic fingerprinting shows that the Enola bean is the same as a bean registered in Sinaola, Mexico, in 1978."10

If it can be established in court that the patent holder did not, in fact, engage in any inventive activity, then the patent holder may find itself facing, not simply a challenge to the validity of its patent, but an antitrust counterclaim for treble damages in the infringement proceedings that the patent holder has brought against the importer of Mexican beans.11 Thus, while the validity of this patent is open to serious challenge, and will clearly have an adverse impact on Mexican farmers if it is not challenged,12 there seems to be no dearth of parties willing, indeed anxious, to mount a challenge to its validity. Again, the main lesson to be drawn from this case is the wisdom of requiring the disclosure of the origin of genetic resources as a routine part of the patent application process—a topic which will be addressed in more detail in Part III of this paper
Related News Articles

Bt-corn does not harm biodiversity

Countering insect resistance with designer Bt toxins

ICGEB receives grant from the Bill & Melinda Gates Foundation to strengthen and expand biosafety systems in sub-Saharan Africa

Policy on the transfer of Genetically Improved Farmed Tilapia (GIFT) from Asia to Africa by the WorldFish Center

Rules on marketing GM produce face review

EU ministers to debate Bayer's GM cotton, soybeans

EU's legal labyrinth of GMO legislation


The latest issue of Plant Physiology (July 2008; Volume 147, Issue 3) has a special section on next generation of biotech crops especially on nutritional improvement.  These papers can
be downloaded free!

Influence of Transgenosis on the Plant-Insect- Relationships, in Particular on Chemically       Mediated Interactions

Effect of Transgenes Conferring Enhanced Pathogen Resistance on the Interaction with Symbiotic        Fungi in Rice

Impact on the Soil Ecosystem through Natural and Genetically Engineered Organisms:
      Effects, Methods and Definition of Damage as Contribution to Risk Assessment

The Decomposition of Bt-Corn on the Fields and its Impact on Earthworms and on other        Macroorganisms in the Soil

Environmental Post-market Monitoring of Bt-maize:
       Approaches to Detect Potential Effects on Butterflies and Natural Enemies

Columns by Dan Gardner

Against the Grains: 'The Terminator Hoax '

Decisions taken in the 84th Meeting of the Genetic Engineering Approval Committee

Brazilian Health Biotech: Fostering Crosstalk Between Public and Private Sectors

Biotechnology Related Article Appeared on 'Samyukta Karnataka' ( Regional Language )
June 12, 2008.

Nothing Left to the Imagination

The Politics of GM Food
Kirit S Javali

Hi-tech seed factories: Sowing Seeds of Success

"Indian Seed Industry is Well Placed to Serve Both Domestic and International Markets"
Dr MK Sharma,
Managing Director,
Mahyco Monsanto

"If we Facilitate Seed Industry, we Facilitate Growth in Agriculture"
Dr Govind Garg,
Krishidhan Seeds

Metagenomics: Window to the Microbial Universe

Few Checks to Prevent Entry of GM Food

Gene Campaign Criticises India’s ‘Silence’ at Global Bio-Safety Meet

An Enforceable International Compact for Infectious Diseases

"Indian Science in Genomics has been Able to Place Itself on the Global Map"

Indian Gene Decoded

The Development of RNAi as a Therapeutic Strategy

FAO E-Conference on Biotechnologies and Water Scarcity

Genetic Landscape

Biotechnology in Food and Agriculture

RH Nature Reviews Genetics 08- Opposition to Transgenic Technologies

Germany: Discussion Paper of German Ag-Industry about EU Biotech Policy Implications

Bt maize performance in Spain

Arsenic speciation varies with type of rice

Why I Am Bothered by Neo-Colonialist NGOs

China experts identify gene for yield, height in rice

The French government has called for a debate on the review of the EU
The World Trade Organisation (WTO) has also repeatedly criticised the EU for "undue delays" in the authorisation of GMOs. See the latest WTO ruling:

The legal bans are in France, Austria, Poland, Hungary and Greece.

EU delays decision on approving more GM crops

UCR Geneticist Plays Scientific Advisor to Movie about “Love, Adventure and ... Genetically Modified Rice”

Gujrat worst-hit by illegal Bt cotton production

Farmers seek ban on GM crops

Call for policing
Ijaz Ahmed Rao discusses the virtues of a bio-safety framework for genetically modified crops, now that they have become farmers’ favourite

Stem cells: The 3-billion-dollar question

Genes as the solution

Food crisis spurs research spending

Global Food Crisis / UN / Bilingual Transcript of Statements by Secretary-General, Heads of Concerned Agencies, and Response to Questions at Press Conference on Global Food CrisisGM Crops, A World View

Mass Protests against GM Crops in IndiaInterference at the EPA

Open letter to Robert B. Zoellick, President, World BankNew BT variety may push short staple cotton output.

The future of agricultural biotechnology: Creative, destruction, adoption, or irrelevance? ICABR Conference 2008

Soaring food prices and global grain shortages are bringing new pressures on governments, food companies and consumers to relax their longstanding resistance to genetically engineered crops.

Prof. Kameswara Rao and Dr. T.M. Manjunath's Participation in 2008 Biotech Activities

Scrutinizing Industry-Funded Science: The Crusade Against Conflicts of Interest

LEADER: Nurturing nanotech

Center for Indigenous Knowledge for Agriculture and Rural Development

Scientists find potential schistosomiasis treatment

Islamic conference boosts S&T with new resolutions

Mexico publishes GM approval guidelines

Uganda 'close to stamping out Hib meningitis'

New method 'prevents spread of GM plants'

Social factors 'help women with post-tsunami stress'

Women scientists celebrated in new charter

Sub-Saharan Africa news in brief: 13–25 March

Brazil creates US$18 million fund for young scientists

Health weeks 'powerful tools' for deworming children

Rotavirus vaccine, not treatment, 'cheaper for Panama'