We have been impatiently waiting for the moment we can finally, finally consider the “Enola” matter laid to rest. That moment has now come…. Please see link to a news release from CAS-IP.
Picture by Neil Palmer, CIAT.
The U.S Court of Appeals for the Federal Circuit (CAFC) dismissed the claims of the original “Enola” patent in July 2009. See our blog entry on the news. However, shortly afterwards POD-NERS petitioned for a panel rehearing, arguing that the panel had misapplied the court’s obviousness precedent. Today we received word that the POD-NERS petition for rehearing was denied on the 16th September 2009.
From this experience, it is clear that information and research results produced by public organisations such as the CGIAR should be clearly and easily accessible to patent examiners. The examiners at the USPTO describe great difficulty in finding printed material about yellow beans during the patent examination process. On re-examination however, a previous publication on some yellow beans served as ‘legal’ prior art in this case. Together with information on gene typing that was submitted by CIAT scientists it was possible to clearly show that certain yellow beans and Enola were in fact the same.
This highlights the legal and practical utility of making publications more widely accessible, and directly through the databases accessed by patent examiners.
One such step CAS-IP, ICRISAT and CIAT have been involved in is an initiative to put publications in front of patent examiners. Under a Memorandum of Understanding executed with the EPO, publications are periodically uploaded onto the EPO’s own Non-Patent Literature database. This is the in-house database that EPO examiners use. This ensures that prior art searches will immediately include research results and information published by centre scientists (see our blog post explaining the initiative). CAS-IP is pressing forward to facilitate having other Centers and public agricultural institutes sign up to this program. In addition, CAS-IP is working with other patent offices such as the US Patent and Trademark Office, (USPTO), and ICRISAT is working with the Indian Patent Office to find additional means for easy ways to provide patent examiners with information.
Finally, back to “Enola” — congratulations to CIAT, and to all those who were involved (including CAS-IP) an the effort that only annulled the “Enola” patent, but also raised awareness which could help avoid this kind of misappropriation of public goods in the future.
Interesting article from Allafrica.com. It deals with a thorny collection of the issues surrounding seed, increasing use of UPOV protection by seed developers, the rights of farmers, genetic diversity and the livelihoods of poor farmers.
The AllAfrica write up also references a news release that was on the International Institute for Environment & Development (IIED) website. This article also includes several references to the loss of benefit to small-scale farmers from new variety development. The IIED say in their post:
“Small-scale farmers rarely benefit when outsiders such as corporate plant breeders make use of their traditional seeds to develop new varieties, because the plant breeders acquire the intellectual property rights when they test and register the new varieties.”
It is worth pointing out that IPRs over a new variety don’t affect the rights of the traditional variety used in the breeding. The public sector should be aware of the workings of the formal IP sector to be able protect its public goods effectively. Being proactive about cataloguing and listing known varieties in common knowledge databases will avoid confusion about what is new and what is not! This is critical information to a PVP examiner processing an application for a “new” variety. The PVP system could also help ensure existing knowledge remains free from restriction, but of course only if that “existing knowledge” is specified and accessible to examiners.
Seems we weren’t the only ones to raise an eyebrow at the IIED article. See the post (and subsequent debate) on the Agricultural Biodiversity Weblog from earlier this month. It picks up on the subject of genetic use restriction technologies (GURTs). It’s a good read!
Thanks to Kalpana Sastry, Principal Scientist at NAARM for sending the AllAfrica link.
Intellectual property management within the context of public research organisations is as much about ensuring access and it is about protecting rights. Back in 2005 CAS-IP initiated a partnership between the European Patent Office (EPO) and ICRISAT, with a view to ensuring the publications produced by ICRISAT would be easily accessible to patent examiners, and thus qualify as “prior art” and therefore minimizing likelihood of becoming patented by 3rd parties.
Had this option been available to USPTO then perhaps a situation like the Enola bean case could have been avoided.
This forms part of a wider scheme of ‘defensive publication’ http://www.cas-ip.org/ip-agriculture/ip-primer/defensive-publication/
Hanumanth B. Rao, the IP Manager for ICRISAT said:
“The collaboration was initiated primarily to complement the Board approved policy in making ICRISAT’s IPRs as prior art… Endorsing the CAS-IP novel approach, the CGIAR Genetic Resource Policy Committee(GRPC) has recommended in its meeting held in Rome on 23-25 April 2007 that Centers should be encouraged to incorporate their publications in databases used by patent examiners. Accordingly, CIAT, the other CGIAR Center has signed a similar agreement with the EPO in Feb 2009. ICRISAT would also like to initiate collaborations with Patent and PVP Offices in India based on these experiences.”
For more information about this please visit the lead link http://www.cas-ip.org/projects/cgiar-centre-publications-as-prior-art/
Link to news item on Spicy IP
Link to news item on the EPO database
Spicy IP reports the signing of an agreement between the Indian Government and the EPO to enable access to India’s Traditional Knowledge digital library (TKDL). The library itself is an impressive undertaking! Looking at the database website they talk of their wish to act as:
“a bridge between traditional knowledge information existing in local languages and the patent examiners at IPOs(international patent offices).”
To do this they have made information from the public domain available digitally, and in 5 international languages. Some of these materials were orginally written in Sanskrit, Hindi or Arabic. The EPO article mentions how the Chinese Patent Office (SIPO) opened their database on traditional Chinese medicine to the EPO in 2008. It also highlighted that these initiatives bring advantages to both parties.
“… it helps protect India’s traditional knowledge from misappropriation and gives the EPO additional relevant information for granting properly defined patents”.
Many thanks to both Kalapana Sastry from NAARM and Antony Mbayaki from Moi University who brought this item to my attention for the blog.
If this topic is of interest to you, Victoria Henson-Apollonio co-authored a paper on Defensive Publishing that is available for free download from the CAS-IP website.