Did You Know?
By D.P. Agrawal
Question: Did you know how the unethical US Patent on the famous Indian Basmati rice was fought and won?
Background: Rice Tec Incorporation had applied for registration of a mark ‘TEXMATI’ before the UK Trade Mark Registry. It was successfully opposed by Agricultural and Processed Food Exports Authority (APEDA). One of the documents relied upon by Rice Tec as evidence in support of the registration of the said mark was the US Patent 5,663,484 (hereafter referred to as ‘484 patent) granted by US Patent Office to Rice Tec on 2 September 1997 and that is how this patent became an issue for contest.
Mashelkar informs that this US utility patent ‘484, was a unique way to claim a rice plant having characteristics similar to the traditional Indian Basmati Rice lines and with the geographical delimitation covering North, Central or South America or Caribbean Islands. The patent was granted to Rice Tec by the US Patent Office on 2 September 1997. The said patent covered 20 claims covering not only a novel rice plant but also various rice lines; resulting plants and grains, seed deposit claims, method for selecting a rice plant for breeding and propagation. Its claims 15-17 were for a rice grain having characteristics similar to those from Indian Basmati rice lines. The said claims 15-17 would have come in the way of Indian exports to US, if legally enforced. The grant of this patent created a stir in the public, government, business circle and academics.
Evidence from the IARI Bulletin was used against claims 15-17. The evidence was backed up by the germplasm collection of the Directorate of Rice Research, Hyderabad since 1978. The various grain characteristics were evaluated by CFTRI scientists and accordingly the claims 15-17 were attacked on the basis of the declarations submitted by the CFTRI scientists on grain characteristics. Eventually, a request for re-examination of this patent was filed on 28 April 2000. Soon after filing the re-examination request, Rice Tec chose to withdraw claims 15 to 17 along with claim 4.
Although Rice Tec did withdraw these claims, the US Patent Office on its own judged that ‘a substantial question of patentability has been raised in respect of the remaining claims’.
Based on the exhaustive office action, Rice Tec has now surrendered the claims 1 to 3, 5 to 7, 10, 14 and 18 to 20.
As such, the claims that Rice Tec now intends to protect are 8,9,11,12 and 13. These claims pertain to specific rice lines and the progeny and the grains of the specific crosses. This means that as against the Indian attack on 3 claims, Rice Tec is withdrawing 15 claims.
The significance of this judgement is that Rice Tec having withdrawn 15-17, the threat of infringement by the export of Basmati grains to US has been averted. And now, with the surrender of all the other claims, even the alleged threat to the export of grains of insensitive rice lines from India has been averted. Further, USPTO has ordered that the title of the patent be changed from ‘Basmati Rice Lines and Grains’ to ‘Rice Lines Bas867, RT 1117 and RT1121’. In short, the objective for which India had filed the re-examination case has been fulfilled.
Mashelkar, R.A., 2001. Intellectual property rights and the Third World. Current Science 81 (8): 962.