Did You Know?
By D.P. Agrawal
Question: Turmeric, an Indian ancient traditional healing medicine, was patented in US by Indian-Americans?
Answer: Thanks to the efforts of Dr. Mashlekar, Director General CSIR, the assigned patents on Indian Traditional Medical Knowledge for turmeric were revoked.
The patent was assigned to University of Mississippi Medical Center, USA. This patent claimed that the administration of an effective amount of turmeric through local and oral route enhances the wound healing process, as a novel finding, whereas practically every Indian housewife knows and uses it to heal wounds. Of all the people it was two US-based Indians, Suman K. Das and Hari Har P. Cohly, who were granted a US Patent 5,40,504 on 28 March 1995 on Use of turmeric in wound healing. Any patent, before it is granted, has to fulfil the basic requirements of novelty, non-obviousness and utility. Thus, if the claims have been covered by relevant published art, then the patent becomes invalid. Indian Council of Scientific and Industrial Research (CSIR) could locate 32 references (some of them being more than one hundred years old, in Sanskrit, Urdu and Hindi), which showed that this finding was well known in India prior to filing of this patent. The formal request for re-examination of the patent was filled by CSIR at USPTO on 28 October 1996.
The first office action in the re-examination was issued by USPTO on 28 March 1997, which rejected all the six claims based on the references submitted by CSIR as being by ‘anticipated references’ and therefore considered invalid under 35 U.S.C. 102 and 103.
After receiving the first action, the University of Mississippi Medical Centre, to whom the turmeric patent was assigned, decided not to pursue the case and transferred the rights to the inventors, who, however, decided to file a response. The inventors argued that the powder and paste had different physical properties, i.e. bio-availability and absorbability, and therefore, one of the ordinary skills in the art would not expect, with any reasonable degree of certainty, that a powdered material would be useful in the same application as a paste of the same material. The inventors, further, mentioned that oral administration was available only with honey and honey itself was considered to have wound healing properties.
In the second Office Action, the examiner rejected all the claims once again and made his action final. He made it clear that the paste and the powder forms were equivalent for healing wounds in view of the cited art.
Subsequent to the second rejection, the inventors had an interview with the examiner and deleted claims 5-6 and also restricted the invention to a ‘non-healing surgical wound’ as supported by the two case histories mentioned in the patent stating that there was no disclosure or suggestion of using turmeric in surgically inflicted non-healing wounds and requested the examiner to allow the amended claims. On 20 November 1997, the examiner rejected all the claims once again as being anticipated and obvious.
The re-examination certificate was issued on this case on 21 APRIL 1998 bringing the re-examination proceedings to a close. The following points are interesting to note:
1. The turmeric case is a landmark case in that this was the first time that a patent based on the Traditional Knowledge of a developing country was challenged successfully and USPTO revoked the patent. This eventually opened up the path to the creation of Traditional Knowledge Digital Library, Traditional Knowledge Resource Clarification, and finally inclusion of Traditional Knowledge in the International Patent Clarification System.
2. Amidst the loud protests against ‘biopiracy’ and ‘theft’ of India’s biodiversity and Traditional Knowledge by foreign nationals, it is interesting to note here that the patentees were Indians (Das and Cohly), the re-examination in USPTO was done by an Indian (Kumar) and the re-examination was sought by an Indian Institution (CSIR).
Mashelkar, R.A., 2001. Intellectual property rights and the Third World. Current Science 81 (8): 960.