TITLE: Unfinished Business: New US Patents on GE Papaya in Thailand AUTHOR: Greenpeace China DATE: September 2004 URL: http://www.greenpeacesoutheastasia.org/en/seanews125.html NOTE: For further information, contact gerard.greenfield(at)hk.greenpeace.org Greenpeace | September 2004 UNFINISHED BUSINESS NEW US PATENTS ON GE PAPAYA IN THAILAND In 1996-98 local papaya varieties from Thailand were genetically engineered for ringspot virus (PRSV) resistance at Cornell University, with genes from unique Thai strains of ringspot virus inserted into papaya cells. The seeds were then brought back to Thailand to be grown and tested in field trials conducted by the Department of Agriculture (DOA). This included the open-air field trial at the DOA's own agricultural research station in Khon Kaen, which was recently exposed as the source of genetically engineered (GE) papaya contamination in farmers' fields. As public concern over the illegal release of GE papaya increases, new questions are emerging concerning the truth behind the US patents on the processes and methods used in creating Thai GE papaya, including GE Khak Dam and Khak Nuan varieties. In the case of GE "SunUp" papaya in Hawaii - the only commercially grown GE papaya in the world - the Material Transfer and Proprietary Rights Agreements signed by farmers indicate that at least eleven US patents are in force (1). This includes patents held by the genetic engineering giant, Monsanto, as well as the Cornell Research Foundation Inc. (2). In Thailand, the DOA has negotiated a Memorandum of Understanding (MoU) with Cornell regarding its intellectual property rights over Thai GE papaya, but the details of this agreement remain hidden from the public. Despite claims that the MoU is still being drafted, other official sources indicate that certain conditions have already been agreed upon. The DOA is already on record in August 2003, stating that under the MoU already signed between Cornell University and Ministry of Agriculture, when GE papaya is commercialized in Thailand, "a royalty fee will be charged."(3) Three New Patents on Thai GE Papaya On June 15, 2004 - only a month before GE papaya contamination was exposed in Khon Kaen - the US Patent & Trademark Office (USPTO) granted a new patent on GE papaya. This new patent is more far-reaching than existing patents on GE papaya, covering the broad range of DNA constructs and methods used to create ringspot virus resistance in any kind of GE papaya. As the patent record shows, this patent was assigned to Cornell Research Foundation Inc. as the effective owner of these intellectual property rights (4). Far more important are two new patent applications now pending at the USPTO. Dr Dennis Gonsalves (who led the original GE papaya project at Cornell and promoted the creation and use of GE papaya in Thailand) filed both of these applications on April 11, 2002. The applications were published by the USPTO on September 11 and October 30, 2003 (5). The first application is an all-embracing "umbrella" patent on all ringspot virus genes used in any variety of PRSV-resistant GE papaya in Hawaii, Brazil, Jamaica, Mexico, Venezuela, and Thailand. This patent involves 113 claims on every aspect of ringspot virus genes and their use in creating virus resistance in papaya, including ownership of papaya cells, plants and seeds. There are 21 claims on GE papaya seeds (6). The second application makes another 20 claims on a wide range of methods and procedures to create disease resistance in papaya plants through genetic engineering, including all papaya cells, plants and seeds produced as a result of those methods (7). Both patent applications make specific claims on the isolation and identification of the coat protein of specific papaya ringspot virus strains from Brazil, Jamaica, Mexico, Venezuela, and Thailand. These patent applications include the genetic "map" the coat protein of Thai ringspot virus as an "invention", making it the intellectual property of Dennis Gonsalves and his collaborators. As with the new patent granted in June, it is fully expected that these two new patents will also be assigned to Cornell Research Foundation Inc. as the ultimate owner of these property rights. So what are the implications? One outcome is that patent rights extend to all papaya fruit, plant and seeds containing the genes of GE papaya. This poses potentially serious problems for farmers who unintentionally grow GE papaya or whose conventional papaya is cross-pollinated by GE papaya. Once these patented genes become part of a seed, the resulting plants, fruit and seed are owned by the patent-holders. Adding to the Unknown Risks of GE Papaya The secrecy surrounding US patents on Thai GE papaya - including the new patents now in process - adds to the unknown risks that this genetic experiment poses to Thai farmers, consumers and the environment. What is the precise arrangement with Cornell, Monsanto and other foreign interests concerning the patents on Thai GE papaya? How and when will these new US patents be applied in Thailand? Will farmers eventually be forced to pay royalties? Who will ultimately be responsible? These questions remain unanswered. All that is certain is that with the spread of GE papaya contamination, Thai people face the possibilty of growing foreign control over papaya plants and seeds. There are already signs that US patent rights may be enforced through the upcoming Thai-US Free Trade Agreement (FTA). Outside of the FTA, the US patent claims on Thai GE papaya will still be applied globally. The two new patent applications on GE papaya were filed with the World Intellectual Property Organization (WIPO) by Cornell Research Foundation Inc. on the same day they were filed with the USPTO (8). This means that these patents will be recognized in over 100 countries - including all of the countries that are major markets for fresh and processed Thai papaya exports. If GE papaya contamination spreads, Thailand's farmers and food exporters may face potentially serious legal and financial consequences. Notes: (1) Patented Papaya - Extending Corporate Control Over Food & Fields, Greenpeace, June 2004. (2) On May 12, 2004, Cornell Research Foundation Inc. was integrated into a new organization called the Cornell Center for Technology, Enterprise & Commercialization (CCTEC). (3) Report of the 3rd ASEAN Training Workshop on Safety and Risk Assessment of GMOs, August 13-15, 2003, p.31. (4) US Patent No. 6,750,382, "DNA constructs and methods to impart resistance to papaya ringspot virus on plants", June 15, 2004. (5) Full details of these patents are available of the patent database of the US Patent & Trademark Office (USPTO): http://www.uspto.gov (6) US Patent Application No.20030172397, "Papaya ringspot virus genes", September 11, 2003. (7) US Patent Application No.20030204869, "Method to control the ripening of papaya fruit and confer disease resistance to papaya plants", October 30, 2003. (8) See WO 02/083925 A2 and WO 02/082889 A1 on the World Intellectual Property Organization (WIPO) patents database: http://www.wipo.org Although Thailand is not yet a signatory of the WIPO agreements such at the Patent Cooperation Treaty (PCT), it is expected to join in the near future. GOING FURTHER (compiled by GRAIN) BIOTHAI http://www.biothai.org/ GM Watch > Focus on Asia http://www.gmwatch.org/p1temp.asp?pid=42&page=1