Enola Patent Ruled Invalid: Haven’t we Bean here before? (Yes, yes, yes, yes and yes.)

On July 10, 2009, the United States Court of Appeals for the Federal Circuit ruled that U.S. patent 5,894,079 (the “Enola” bean patent), which claims a yellow bean of Mexican origin, is invalid because none of the patent claims meet the criterion of non-obviousness. The case has been closely watched by civil society groups concerned about biopiracy, the patenting of life and the corporate control of food production. The Court’s clear 7-page decision argues that anyone interested in reproducing or improving Mexican yellow beans would have done exactly what the “inventor” Larry Proctor did: “plant the beans, harvest the resulting plants for their seeds, planting the latter seeds, and repeat the process two more times.”[1] The decision concludes with an appeal to “common sense” in upholding a previous rejection of the patent by the Board of Patent Appeals.

“What makes absolutely no sense is that an invalid patent was allowed to stand for more than a decade – that’s half the lifespan of a patent!” argues Kathy Jo Wetter of ETC Group. “Furthermore, although farmers and seed companies on both sides of the border have been denied lucrative markets for ten years, they will not be compensated.”

Almost a decade ago, ETC Group (then RAFI) denounced the Enola bean patent, granted April 13, 1999, as predatory on the knowledge and genetic resources of indigenous peoples and farming communities, the true innovators of Mexico’s yellow beans. ETC Group requested that the UN Food and Agriculture Organization (FAO) and the Consultative Group on International Agricultural Research (CGIAR) investigate the  “Mexican bean biopiracy” as a likely violation of a 1994 Trust Agreement ensuring that designated crop germplasm would be kept in the public domain and off-limits to intellectual property claims. The Colombia-based International Center for Tropical Agriculture (CIAT, a CGIAR center), with support from FAO, filed an official challenge at the end of 2000. The U.S. Patent & Trademark Office reexamined the patent and, in late 2003, issued the first of four rejections. Two “final” rejections came in 2005, when the patent was six years old. The patent owner appealed, and the Board of Patent Appeals ruled the patent invalid again in April 2008 – Enola’s patentability had now been rejected four times. It was this ruling that the patent owner was trying to overturn in the latest, the fifth and presumably the last, review of the Enola case.