US Patent Office rejects company's claim for bean commonly grown by Latin American farmers

CIAT was able to dispute the inventor’s claims to a unique color by providing published evidence of 260 yellow beans among the almost 28,000 samples of Phaseolus in its crop “genebank.” At least six of the CIAT varieties were, to most observers, identical to the bean described in Proctor’s patent documents on the basis of color and genetic markers. CIAT also put forward publications to show that the claims in the patent application took credit for research already widely available in scientific literature and thus claims made regarding the breeding of the bean in his patent also failed to meet the patent office’s statutory requirements for “non-obviousness and novelty.”

In addition, CIAT pointed out that Proctor had not obtained a permit to export the beans from Mexico and that a version of the bean variety in question had been released to the public by the Mexican government in the 1970s.

Yet Proctor actively enforced his patent. At one point, the patent-holder’s US$0.6-claim on every pound of yellow beans sold in the United States caused a steep decline in exports of such beans from Mexico to the USA, according to Mexican government sources.

The patent office issued a preliminary decision in 2003 rejecting all the patent claims and gave a final rejection in December 2005. Proctor filed an appeal through the USPTO, and in accordance with USPTO rules, the patent remained in force while the appeal was being considered by the Board of Patent Appeals and Interferences (BPAI). Proctor can still appeal the USPTO decision in the US federal courts, all the way to the Supreme Court venue, a costly move; if he so chooses.

“We understand that individuals and companies have a right to patent what are clearly novel agriculture innovations,” said Hawtin. “But when food crops are involved, particularly crops that have been used for years, governments have a duty to ensure that they have been presented with a clearly distinct and novel discovery and that the plant material used in the research and development was lawfully obtained. Agricultural researchers have a responsibility to make sure that publications are easily available to patent examiners.”

CIAT officials said that, while they were concerned about the immediate economic impact of the Enola patent, more broadly, they worried that the patent would establish a precedent threatening public access to plant germplasm—the genetic material that comprises the inherited qualities of an organism—held in trust by CIAT and research centers worldwide.