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.
I can normally rely on the sarcasm of IPKat to make me smile! This article was no exception; an analysis of the verbatim on the new UK Pirate Party website (born from a movement connected to the Pirate Bay case blogged here on a number of occasions).
The Pirate Party’s over simplification of the negative aspects of IP laws got me thinking about the IP debate within our arena of “public goods”.
An analogy Victoria Henson-Apollonio recently used sumed it up nicely for me — she said:
“think of IP as a tool, like a hammer you can use it to knock a nail into a piece of wood, or you can smash a window..!”
There are some critics out there in the blogosphere who seem to be ideologically against intellectual property protection, and there are emotive and compelling arguments in this camp. The issue of the Enola patent is a great example of badly applied IPRs. But equally, well managed IP can be hugely beneficial to developing economies. Imagine the African music industry with no copyright protection. Or a research partnership agreement with a private sector partner and no clauses to clarify freedom to disclose results. We just need to make sure the tool is used correctly to keep it away from the windows!
This is GREAT news! The controversial Enola Patent is no more!! See the lead link for the PatentlyO write up. (UPDATE: There is now also information and comment both on the CIAT blog and the CIAT official release on CIAT’s main website.)
CAS-IP has been supporting CIAT in moving this process along since 2000, when John Dodds filed the original request for re-examination. CAS-IP had also assisted CIAT and pro bono lawyers from Morrison&Foerster with the drafting and presentation of an Amicus brief to the Court of Appeals.
Victoria Henson-Apollonio, manager of CAS-IP wrote the following note on the decision:
“On Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) dealt a final blow to the patent claims of the Enola patent, U.S. Patent No. 5,894,079.
In its ruling the CAFC said:
“In a combined proceeding in which a third person sought re-examination of an issued patent and the patentee sought re-issue of the patent to broaden the claims, the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences (“Board”) held the patent claims invalid on multiple grounds, including that they would have been obvious at the time the invention was made. We affirm the obviousness ruling and therefore sustain the Board’s decision without reaching the Board’s other grounds.”
Here is the pdf file from the CAFC’s Internet site http://www.cafc.uscourts.gov/opinions/08-1492.pdf
With this decision, the Court has invalidated this patent. The patent owner, Pod-Ners LLC (Larry Proctor) can no longer sue buyers and sellers of yellow beans in the U.S. This is a victory for all genebanks that hold and distribute yellow beans, especially the genebank of the Centro Internacional de Agricultura Tropical/International Center for Tropical Agriculture (CIAT). CIAT holds and distributes germplasm from many crops, including beans, to subsistence farmers and those that work to help poor farmers, everywhere in the world.”
For more background information visit the CAS-IP site. We will be updating this page shortly.
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/
CAS-IP in the news! See the link above for the CIAT (www.ciat.cgiar.org) story about the “Controversial Court Patent Case for Simple Yellow Legume has Become Rallying Point for “Biopiracy” Concerns”
CAS was involved with the patent re-examination (http://www.cas-ip.org/?page_id=42). We will post an update to this case study in due course.
Posted in patent
Tagged CAS, Enola, patent