FEATURE

Bio Piracy A
Discussion of Some
Important Cases
The article discusses the issue of large pharmaceutical companies patenting bio-resources
that have been traditionally used by the indigenous people of a land.

Bio piracy is the appropriation of the

knowledge and genetic resources of
farming and indigenous communities
by individuals or institutions seeking
exclusive monopoly control (usually
patents or plant breeders rights) over
these resources and knowledge.1
The term, bio piracy has no usus
loquendi in international conventions
on the subject of genetic resources
and bio-diversity but is a colloquial
derivation arising from cases concerning
commercial exploitation of bio-diversity
in developing countries in Asia and
South America. The alleged piratical
appropriation of resources and knowledge
could include the patenting of preexisting forms of knowledge possessed
by the indigenous communities, which
are, however, absent from the popular
public databases, and the commercial
monopolisation of such knowledge, in
a manner which is deleterious to the
interests of the indigenous communities.
Quite understandably, the indigenous
communities are piqued to nd that the
genie has been taken out of the bottle
and there are no wishes being granted
to the people who have preserved it for
so long. They allege that the Western
pharmaceutical industry has, in many
instances, not taken their consent, as
facilitators, before going ahead with
the commercial exploitation of the
traditional knowledge. While South bloc
countries wait for intellectual property
laws to catch up on providing protection
August 2004

12

The Singapore Law Gazette

to traditional knowledge,2 some of the

important cases and instances of bio
piracy are examined in this article.

Controversial Cases Involving

Traditional Knowledge and
Genetic Resources
Turmeric patent
Turmeric (Curcuma longa) is a plant
of the ginger family yielding saffroncoloured rhizomes used as a spice for
avouring Indian cooking. It also has
properties that make it an effective
ingredient in medicines, cosmetics and
as a colour dye. As a medicine, it has
traditionally been used to heal wounds
and rashes.3
In 1995, two researchers at the
University of Mississippi Medical Centre4
were granted a US patent on the use
of turmeric in wound healing.5 The
patent claims were based on the use
(administered both orally and topically)
of turmeric, as a wound healing agent.
The Indian Council of Scientic and
Industrial Research (CSIR) requested
the US Patent and Trademark Ofce
(USPTO) to re-examine the patent.
The argument made by CSIR was that
turmeric has been used in India for
thousands of years for healing wounds
and rashes and, therefore, its medicinal
use was not novel. Novelty is as such, an
essential requirement for any patentable
invention. CSIRs claim was supported
by documentary evidence that included

an ancient Sanskrit text and a paper

published in 1953 in the Journal of the
Indian Medical Association.6 The patent
was nally revoked by the USPTO on 14
August 1997 on grounds of established
prior art.

Neem patent
Neem (Azadirachta indica) is a tree
found primarily in India and other parts
of South and Southeast Asia. It is now
planted across the tropics because of
its properties as a natural medicine,
pesticide and fertiliser. Neem extracts
can be used against pests and fungal
diseases that attack food crops. Other
applications of Neem include the oil
extracted from its seeds which is used
to treat colds and u, and, mixed in
soap, is believed to offer low cost relief
from malaria, skin diseases and even
meningitis.7
In 1994, the European Patent Ofce
(EPO) granted a process patent8 to the
US Corporation WR Grace and the US
Department of Agriculture (USDA) over
a method for controlling fungi on plants
by the aid of a hydrophobic extract of
Neem oil.9
This patent was challenged by a group
of

non-governmental

organisations

(NGOs) in India and the European Union

in 1995.10 They submitted evidence to the
effect that the fungicidal effects of Neem
seed extracts were known to and used by
Indian agriculturists for centuries and the

FEATURE
claimed invention was, therefore, void
of novelty or inventive step.
After reviewing the evidence submitted
by the NGOs, the EPO panel accepted
that Neem had been used in India for
many years and the patented process
for use of Neem extracts in fungicidal
treatment did not represent an inventive
step and the patent was revoked by the
EPO in 2000, six years after its grant.

Ayahuasca patent
For generations, shamans of the
indigenous tribes living in the Amazon
Basin have processed the bark of the
Ayahuasca tree (Banisteriopsis caapi or
B.caapi) to produce a ceremonial drink
known as ayahuasca. The shamans use
ayahuasca (which means vine of the
soul) in religious and healing ceremonies
to diagnose and treat illnesses and
divine the future. What is remarkable
and signicant is that at least 72 different
indigenous tribes of Amazonia, however
widely separated by distance, language,
and cultural differences, all manifest
a detailed common knowledge of
ayahuasca and its use.11
An American, Loren Miller, obtained a
patent from the USPTO in June 1986,
which granted him monopoly rights over
an alleged variety of B.caapi that he called
Da Vine. The patent description stated
that the plant was discovered growing in
a domestic garden in the Amazon rainforest of South America.12 The patentee
claimed that Da Vine represented a
new and distinct variety of B.caapi,
primarily because of the colour of
its ower.
The Co-ordinating Body of Indigenous
Organisations of the Amazon Basin and
the Centre for International Environment
Law (CIEL) subsequently led a reexamination request on the Da Vine
patent.13 The request was based on the
fact that the existing prior art included
the Da Vine specie of the B.caapi plant
and that the granting of the patent would

be contrary to the public interest and

morality because of the sacred nature of the
Ayahuasca tree throughout the Amazonia
region.14 Extensive and relatively recent
prior art was presented by CIEL, and in
November 1999, the USPTO rejected the
patent agreeing that the patent should
never have been issued.15
Though the rejection represented a
victory for the NGOs, the rejection
itself was made on the narrowest legal
ground under the statutory bar of 35
USC 102(b). The said section of the
US patent law prohibits, inter alia, the
issuance of a patent when the invention
was patented or described in a printed
publication more than one year prior to
the date of patent application. Thus, the
historical use of the Ayahuasca tree was
neither acknowledged nor established as
prior art by the USPTO.
Due to this legal technicality, the patentee
appealed successfully and, in early
2001, the USPTO went against its earlier
decision and decided that the patent for
the Da Vine variety of Ayahuasca was
valid, since at the time when the patent
was challenged by CIEL, the US patent
law did not permit third party challenges
to patent claims.16 The US law has since
been amended and has introduced new
rules on inter partes re-examination of
patents on the basis of prior art.17
After the validation of the Ayahuasca
patent by the USPTO, there have been a
number of protests by NGOs representing
the tribes of the Amazon basin and various
other environmental organisations, but
to no avail, and the Ayahuasca tree is
now being commercially cultivated in
the US and Hawaii.

Hoodia cactus patent

The San bushmen who live around the

the Hoodia cactus (Hoodia Gordonii)

to stave off hunger and thirst on their
long hunting trips. Traditional use of
Hoodia cactus is, however, not restricted
to the San people only. The Haioms of
northern Namibia still use Hoodia sap
to treat allergic reactions in the eyes,
and to treat severe stomach pain, they
boil Hoodia pieces in water and drink
the brew. The Anikhwe of northern
Botswana feed children who eat too
much pieces of Hoodia to make them
eat less. For decades, obese members
of the Khomani community of northwestern South Africa had been eating
the Hoodia to slim down or to maintain
a high energy level.18
Scientists at the South African Council
for Scientic and Industrial Research
(SACSIR) only recently came upon
this traditional use of the Hoodia cactus
and began research on it to determine
its benecial constituents.19 In 1995,
SACSIR patented Hoodias appetitesuppressing element and thereafter
licensed the patent to the UK biotech
company, Phytopharm, in 1997. In 1998,
the pharmaceutical company Pzer
acquired the rights to develop and market
the drug as a potential slimming drug
and cure for obesity (a market reportedly
worth more than 6bn annually), from
Phytopharm for a reported payment of
21m in royalty payments.20
On hearing of the commercial
exploitation of the Hoodia, the normally
reclusive San threatened legal action
against the SACSIR on grounds of bio
piracy. They claimed that their traditional
knowledge had been stolen and that
SACSIR had failed to comply with the
rules of the Convention on Biological
Diversity, which requires the prior
informed consent of all stakeholders,
including the original discoverers and
users.21

Kalahari Desert in southern Africa are one

of the worlds oldest and most primitive

Under pressure from environmental

tribes. The San have traditionally eaten

groups and representatives of various

August 2004

The Singapore Law Gazette

13

FEATURE
African tribes, an understanding was

An initial challenge was mounted against

on novelty, inventiveness and usability,

reached between the SACSIR and the

the RiceTec patent by the Government of

is not sufciently sensitised to deal with

San whereby the San were recognised as

Indias Agricultural and Processed Food

cases of traditional knowledge. The

the custodians of traditional knowledge

Products Export Development Authority

difculty faced by patent examiners,

associated with the Hoodia plant.

(APEDA) on the grounds of lack of

in a large part arises from the lack of

Pursuant to this agreement, the San will

novelty of the Basmati rice grain. This

written prior art ie documented records

receive a percentage of the future royalties

challenge was, however, pre-empted by

from the commercial exploitation of the

of traditional use of genetic resources.

the lawyers for RiceTec by deleting four

Hoodia cactus.22 As for the San, although

patent claims that dealt with the novelty

they remain annoyed that they were

In some cases of bio piracy, patents have

of the hybrid rice grain. The remaining

almost swindled, they cant help but be

been granted for pseudo inventions due

16 claims which dealt with techniques

amused by the prospect of Westerners

to the lack of knowledge of their prior

for production of the rice line outside

using the Hoodia plant for slimming

South Asia were continued by RiceTec.

use, while in other cases, the issue of

down.23
RiceTecs remaining patent claims were
subsequently allowed by the USPTO

Basmati rice patent

Basmati rice is renowned for its length
and aroma and has been traditionally
grown in South Asia, particularly in the
countries of India and Pakistan. Farmers
in both countries have, over centuries

after deleting the term Basmati from

the claims. However, this deletion was
only supercial as the amended patent
granted by the USPTO, gave monopoly
rights to RiceTec to market rice lines
Bas-867, RT-1117 and RT-1121 which

perfected the art of selection and farming

were described as having characteristics

of basmati rice grain. Basmati rice exports

similar or superior to those of good

form an important part of the revenues of

quality Basmati rice.26

these agriculture dependent economies.

The Basmati saga is not an isolated incident

address the identity of the inventor(s).

Patent law has so far only beneted
large pharmaceutical and life sciences
companies in preserving the status quo.
It has been argued that patent law is
inherently incapable of protecting such
resources as it offers protection to new
inventions and only for a limited time
period. It is highly speculative to assume
that indigenous communities would be
ready to disclose their best kept secrets
in exchange for the 20 odd years of
exclusive prots.

In September 1997, RiceTec, a Texas,

of patenting of the rice grain. The US has

USA-based agri-business company, was

been able to maintain a stronghold on the

granted a US patent on a new variety of

international rice business through effective

Acknowledging

basmati rice line and grain, ostensibly

use of its patent laws. By September 2000,

patent law, efforts are being made at an

obtained by crossing a selected basmati

609 patents on rice genes had been

international level to create appropriate

seed with a semi-dwarf variety of long-

granted and US corporations owned the

legal mechanisms for protecting the

grain American rice.

lions share of these patents, holding 45%

traditional knowledge of indigenous

of the worlds rice gene patents.27

tribes. Some headway has been made

24

RiceTec claimed

that it had invented a way to produce

basmati rice in the US which was
comparable to the best basmati grown in

the

inadequacies

in

in these efforts with the use of national

databases of traditional knowledge and

India and Pakistan. It also claimed that

Conclusion

rice plants thus bred were of semi-dwarf

The above cases are illustrative of todays

indigenous communities. It is hoped that

variety and were substantially photo-

reality that the pharmaceutical industry

royalties from the licensing of such national

insensitive and high-yielding.25 RiceTecs

is looking towards natural bio-resources

traditional knowledge databases can be

patent encompassed 20 patent claims

and their traditional use by indigenous

used for the betterment of the shamans,

that related to the process for their

communities, in the eld of medicine and

who have nurtured ancient wisdom for

breeding the new strain of the hybridised

life science. When patent protection is

the benet of future generations.

rice grain and the rice line itself. The

granted to inventions based on traditional

company subsequently began producing

knowledge, it effectively starves the

Abhinav Bhatt

and marketing the Texan rice, calling it

indigenous people of their livelihoods.

TSMP Law Corporation

Texmati.

International patent law, which is based

E-mail: ab@tsmp.com.sg

August 2004

14

novelty is not as important an issue as to

The Singapore Law Gazette

genetic resources which are owned by

FEATURE
Endnotes
1

4
5
6
7

The Action Group on Erosion,

Technology and Concentration
(formerly the Rural Advancement
Foundation International) at http://
www.etcgroup.org.
A World Intellectual Property
Organisation
(WIPO)
Intergovernmental
Committee
on
Intellectual Property and Genetic
Resources, Traditional Knowledge
and Folklore was established in
September 2000 as an international
forum for debate and dialogue
concerning the interplay between
intellectual property and traditional
knowledge, genetic resources and
traditional cultural expressions
(folklore). For more information on
the role of WIPO, see http://www.
wipo.int/tk/en/index.html.
For more information on the benets
of turmeric, see http://www.herbalsupplements-guide.com/turmericbenets.html.
Das, Suman K and Hari Har P
(Jackson, MS).
Patent No 5,401,504, granted on 28
March 1995. For more information,
see http://www.uspto.gov.
US patent law only recognises prior
art that is in material written form.
See
http://www.neemfoundation.
org/index1.htm.

9
10

11
12
13
14
15

16

17

European Patent No 0436257, see

http://www.european-patent-ofce.
org.
See
http://www.nal.usda.gov/afsic/
Patents/1994/05356628.pat.
The challenge to the Neem patent was
made at the Munich ofce of the EPO
by three groups: the EU Parliaments
Green Party, Dr Vandana Shiva of the
India-based Research Foundation for
Science, Technology and Ecology
and the International Federation of
Organic Agriculture Movements. See
article by Chakravarthi Raghavan:
Neem Patent Revoked by European
Patent Ofce at http://www.twnside.
org.sg/title/revoked.htm.
Schultes and Raffauf, The Healing
Forest and also see, http://www.
biopark.org/ayahuasca.html.
US Plant Patent No 5,751.
See the re-examination request at:
http://www.ciel.org/Publications/Ree
xaminationofUSPlantPatent5751.pdf.
Ibid.
See, Bio-Piracy in the Amazon;
at
http://www.amazonlink.org/
biopiracy/ayahuasca.htm; see also,
http://www.ciel.org/Biodiversity/
AyahuascaRejectionPR.html.
See, Leanne M Fecteau: The
Ayahuasca Patent Revocation: Raising
questions about current US patent
policy Boston College Third World
Law Journal, 2001.
35 USC 311318 and rules

18

20
21

22
23
24
25
26

27

relating to inter partes examination

in 37 CFR 1.9021.997.
For more information on the Hoodia
cactus, see http://www.botanic-art.
com/hoodia.htm. See http://www.
csir.co.za/plsql/ptl0002/ptl0002_
pge001_home.
See, the website of the international
NGO Grain for further details, at
http://www.grain.org.
Article 8, Convention on Biological
Diversity mandates approval of
knowledge holders prior to its
sustainable use and encourages
equitable sharing of the benets
arising from the utilisation of
such knowledge. The text of the
Convention is available at, http://
www.biodiv.org/convention/articles.
asp.
As per Media Release by SACSIR, on
22 March 2002 available at the CSIR
website.
Excerpt from press release from
Associated Press No 8/25/92.
US Patent No 5,663,484 dated 2
September 1997.
R Ramachandran, Challenging the
Basmati Patent; in The Frontline,
Vol 17, Issue 10, 1326 May 2000.
An excerpt from the RiceTecs patent
description, taken from an article by
Devinder Sharma: Let Us Accept It,
India Has Lost the Battle, at http://
www.makingindiagreen.org.
13 Alb LJ Sci & Tech 123.

Viewpoint Ad Repeated Advertisement

SLG June Pg 27

August 2004

The Singapore Law Gazette

15