Small yellow bean sets off intern'l patent dispute

The New York Times March 20, 2001

SMALL YELLOW BEAN SETS OFF INTERNATIONAL PATENT DISPUTE

By Timothy Pratt

Cali, Colombia ? Dr. Joachim Voss has a quick smile and easy laugh, but he has decided to pick a fight in his new job as director of one of the agricultural research centers that helped avert famine in India as part of the "green revolution" in the 1960's.

Dr. Voss, director of the International Center for Tropical Agriculture (CIAT), has crossed the line from the laboratories he directs here in Colombia to law offices in Washington, making his center the first agricultural research center in the developing world to challenge a United States patent on a crop.

The subject of the dispute is a bean, faded yellow and smaller than a thumbnail, that most Americans have never seen. It's called Enola, or at least that's what Larry Proctor, proprietor of Pod-ners L.L.C. and holder of United States Patent No. 5,894,079, calls it, after his wife's middle name.

But Dr. Voss, bean importers, breeders and genetics specialists across America, as well as international activist organizations like Rural Advancement Foundation International (RAFI), say Mr. Proctor has simply given a new name to and gotten rights over a bean that Mexicans and other Latin Americans have been eating for centuries.

Mr. Proctor's patent in large part rests on a claim to have created what his lawyer, David Lee, called "a particular color yellow." So, in theory, anyone researching or commercializing a bean with this color has to pay royalties first, or risk being sued. In fact, Tutuli Produce, a bean importing company in Nogales, Ariz., is now fighting a lawsuit filed by Mr. Proctor, and has lodged a countersuit, parallel to the research center's patent challenge.

"There has been no breeding or improvement in this bean, and newness is the first feature for claiming an invention under U.S. patent law," says Dr. Daniel Debouck, a Belgian genetic resources specialist at the tropical agriculture center. He has spent 25 years collecting crop plants and their wild relatives in tropical America. He presides over the world's largest collection of beans in the center's gene bank ? 28,182 at last count. At least 260 of them are yellow, and six "are very similar" to the Enola, Dr. Debouck said.

Dr. Voss calls the patent "both legally and morally wrong," adding, "We have solid scientific evidence that Andean peasant farmers developed this bean first, together with Mexico."

According to the patent itself, Mr. Proctor brought a bag of dry beans from Mexico in 1994, picked out some yellow beans, and planted them in Montrose County, Colo. Mr. Lee says this part of the patent exhibits "an unfortunate error, since the beans were actually brought over in 1991." In any case, Mr. Proctor filed for an exclusive monopoly patent in 1996, having invented a "distinctly colored yellow seed that remains relatively unchanged by season." On April 13, 1999, Mr. Proctor won the patent.

Soon after, RAFI, a Canadian organization that works to protect biological diversity in agriculture, issued a news release in protest, calling the patent "a textbook case of biopiracy." It said "yellow beans have been grown in Mexico for centuries, developed by farmers and more recently by plant breeders."

Breeders and other researchers are among those most affected by this and other similar patents on living organisms, especially those working in the public sector, including the Future Harvest network, which CIAT is a part of, and universities.

In a telephone interview, Dr. James Kelly, a breeder at Michigan State University, said, "The bean research community is very concerned about this patent since it opens the gate to patenting other characteristics that would then impinge on our role as public scientists."

Mr. Lee said, "There's a lot of talk about Mr. Proctor doing nothing, but he devoted five years to coming up with what is basically a new bean."

This claim rests on the 1991 date, and makes breeding a new variety more plausible, since two years would be too little time for this process.

The Mexican national institute for forestry and agricultural research and the secretary of agriculture became involved after Pod-ners attempted to protect its patent by suing Tutuli Produce, importer of a yellow bean named Mayocoba. Tutuli and an organization of farmers in northern Mexico filed a countersuit, alleging that the patent itself was invalid.

"I thought the whole thing was a joke," said Rebecca Gilliland, owner of Tutuli. "How are they going to tell me they invented a bean I've been eating for 40 years?"

Mexico says a process called genetic fingerprinting shows that the Enola bean is the same as a bean registered in Sinaloa, Mexico, in 1978. Mr. Lee said: "We keep hearing rumors about these genetic tests, but I haven't seen anything. If the Mexican government says they're the same, they don't know anything about genetics."

Dr. Cary Fowler does. He is a geneticist, author of "Food First: Beyond the Myth of Scarcity" and adviser to the Rome-based International Plant Genetic Resources Institute, also part of the Future Harvest global network of 16 research centers. To him, the bean patent dispute is all about genes, and germplasm, which in plants is a seed or any plant part that can be used for reproduction.

"The Future Harvest system is the world's trustee of agricultural germplasm, with about 10 percent of the world's gene banks," he said. "What's more, the rest of the world's germplasm is held by governments, whereas the centers are in the public domain. When genes get locked up in patents like this, there's a disincentive for research created."

Commenting on the position of Mr. Fowler and other scientists, Mr. Lee sees the whole thing as an "unfortunate misunderstanding," and feels his client's patent is "being used as an example." Mr. Lee admits that the patent system is flawed, especially when it comes to living organisms.

In 1980, the first such patent was awarded, for a rat with genes that created cancer tumors.

"Since then, and especially in recent years, with biotechnology and several high profile cases of alleged piracy, the whole issue has become as emotional as abortion," Mr. Lee said. "But if CIAT or other scientists in the public sector would have approached us, we would have gladly given them license to carry on research ? as long as it is free of commercial interest, and we could see the results."

Still, Dr. Voss insists, "This is only the most recent example of companies abusing the U.S. patent system for commercial advantage."

In February, the Patent Office said there were sufficient merits to proceed with the challenge. The process could take months, and the lawsuit may be rendered moot if the patent is declared invalid. Either way, a precedent has been set that is unlikely to go unnoticed, in an age when laboratories and lawyers are increasingly intertwined.

Copyright 2001 The New York Times Company