Excerpts from Ch. 12 in BURTON ONG (ed.)
INTELLECTUAL PROPERTY AND BIOLOGICAL RESOURCES
(Marshall Cavendish Academic, 2004)

The Enola Bean Patent—Of all the high-profile biopiracy controversies stimulated by U.S. patents, the most serious is the one generated by Patent No. 5,894,079, a utility patent on a yellow bean derived from (if not identical with) a bean that Mexicans and other Latin Americans have been eating (and growing) for centuries.1 Named the Enola Bean, based on the middle name of the patent holder’s wife,2 the bean was supposedly developed from a bag of dry beans that, according to the patent, were purchased and brought over from Mexico in 1994.3 However, the patent holder’s patent lawyer concedes that the date recited in the patent is "an unfortunate error, since the beans were actually brought over in 1991."4 That error turns out to have been indeed unfortunate (and causes one to wonder why the patent holder retains that attorney if it was he who allowed such an error to slip into the patent), as the patent holder apparently would not have been physically able to produce a new variety in the time specified in the patent.5 If that is indeed the case, one wonders whether this patent should have issued at all. Thus, many reputable academic and other public-sector researchers, not just RAFI, suspect that the patent holder may have simply given the bean a new name and gotten patent rights that the patent holder is now using to exclude imports of yellow beans from Mexico.6 It is little wonder that CIAT has decided to challenge the Enola bean patent.7

But the patent holder may be playing an exceedingly dangerous game, as he is attempting, on the one hand, to argue (in order to defend the patent’s validity) that his patented bean is distinguishable from Mexican yellow beans, but have nevertheless brought an infringement proceeding against importers of Mexican yellow beans.8 To the suspicious eye, this looks like the patent holder is trying to have it both ways. 9 Together with the "unfortunate error" in the patent about the date the progenitor beans were supposedly brought over from Mexico, the behavior of the patent holder begins to give off the unsavory aroma of possible patent misuse, particularly as Mexico has claimed that a process of "genetic fingerprinting shows that the Enola bean is the same as a bean registered in Sinaola, Mexico, in 1978."10

If it can be established in court that the patent holder did not, in fact, engage in any inventive activity, then the patent holder may find itself facing, not simply a challenge to the validity of its patent, but an antitrust counterclaim for treble damages in the infringement proceedings that the patent holder has brought against the importer of Mexican beans.11 Thus, while the validity of this patent is open to serious challenge, and will clearly have an adverse impact on Mexican farmers if it is not challenged,12 there seems to be no dearth of parties willing, indeed anxious, to mount a challenge to its validity. Again, the main lesson to be drawn from this case is the wisdom of requiring the disclosure of the origin of genetic resources as a routine part of the patent application process—a topic which will be addressed in more detail in Part III of this paper