Bioethics@

Volume 9, Number 2
May 2007


Plants, Patents, Property, and Pirates Part II:  Theft by Patent?

Clark Wolf, Director of Bioethics, Iowa State University


The PBJ: U.S. Patent Number 6,004,596

In 1997, two enterprising Midwesterners filed a patent for an “invention” which they described as follows:

A sealed crustless sandwich for providing a convenient sandwich without an outer crust which can be stored for long periods of time without a central filling from leaking outwardly. The sandwich includes a lower bread portion, an upper bread portion, an upper filling and a lower filling between the lower and upper bread portions, a center filling sealed between the upper and lower fillings, and a crimped edge along an outer perimeter of the bread portions for sealing the fillings therebetween. The upper and lower fillings are preferably comprised of peanut butter and the center filling is comprised of at least jelly. The center filling is prevented from radiating outwardly into and through the bread portions from the surrounding peanut butter.


Their application was successful, accepted as U.S. patent number 6,004,596.  Len Kretchman and David Geske now possessed one of the most interesting patents ever to have been issued by the U.S. Patent Office.  They had a patent on the invention of the peanut butter sandwich.

It must be recognized that the patented sandwich has some qualities that distinguish it from many, and perhaps most, of the sandwiches that are packed in school lunchboxes in elementary schools around the country.  The invention specifies that there must be two layers of peanut butter with jelly in between.  This prevents the jelly from making the bread soggy.  The invention also specifies that the crust shall be removed.  In approving this patent, the examiner apparently decided that “surrounding jam with peanut butter so the bread will not get soggy is a new idea, and one that was not previously obvious” to experts skilled in the art of sandwich making. (Jaffe & Learner, p. 33)

It probably does not need to be argued that this was a bad decision on the part of the patent examiner, and that this unfortunate patent should never have issued.  But this PBJ patent indicates what can go wrong when patents go bad.   In 2001, a small grocer in Gaylord Michigan received a “cease and desist” order from the J.M. Smucker Co., which had acquired ownership of patent 6,004,596.  Albie’s Foods was accused of “violating Smucker’s intellectual property rights by selling crustless peanut butter and jelly sandwiches.” (Jaffe & Learner, p. 24)  Albie’s resisted the order to cease their sales of crustless PBJs, and the matter was ultimately settled out of court.  The PBJ patent still stands, though there is reason to suspect that it would not survive a concerted challenge.


Privatizing the Intellectual Common?

When inappropriate patents issue, they remove from the public domain what would otherwise be common intellectual property, available freely to all of us.  This has long been recognized as a misuse of patent law.  In the 1833 case Shaw v. Cooper, the U.S. Supreme Court wrote:

“The patent law was designed for the public benefit as well as for the benefit of inventors.  For a valuable invention, the public, on the inventor’s complying with certain conditions, give him, for a limited period, the profits arising from the sale of the thing invented.  (…) But it was not the intention of this law, to take from the public, that of which they were fairly in possession.  In the progress of society, the range of discoveries… will be enlarged…  [I]t would be extremely impolitic, to retard or embarrass this advance, by withdrawing from the public any useful invention or art, and making it a subject of private monopoly.”


It is a misuse of the patent system to claim as private intellectual property what would otherwise be public.  If we, as members of the public, have a right to knowledge that is in the public domain, then such a misuse of the patent system constitutes a kind of theft.


Biopiracy

One claim often made against patent protection for plants and other living organisms is that such patents facilitate “biopiracy” understood as the theft of traditional knowledge by removing it from the common.  Some have expressed doubt about the concept of biopiracy: Ronald Bailey (2003) urges that the entire concept is a ‘myth,’ and Jim Chen (2006) has argued that there simply isn’t any such thing.  But patents can be used to remove items from the public domain, and when patents are misused they can inappropriately remove biological knowledge and crop varieties from the public domain.

In 1999, Larry Proctor received U.S. Patent number 5,894,079 for what he called the “Enola Bean,” a yellow bean that he claimed to have refined over two years of selective breeding purchasing the original stock in Mexico.  Because Proctor’s patent identifies the claimed bean by its color, this patent provides Proctor with intellectual property rights in any bean of the species Phaseolus vulgaris “wherein the yellow color is from about 7.5 Y 8.5/4 to about 7.5 Y 8.5/6 in the Munsell Book of Color when viewed in natural light.” (claim 8 of U.S. Patent 5,894,079)

At the time when Proctor’s patent issued, Rebecca Gilland had been importing yellow “Mayacoba” beans from Mexico into the United States for five years.  Sandy Tolan, a reporter for National Public Radio, writes that by 1999 Gilland “was up to six million pounds, or about a semi-truck load every couple of days.  The next year, she says, business was to triple.  The market was ready.” (Tolan)  In 1999, Gilland received notice from Larry Proctor’s company ordering her to cease the importation of Mexican yellow beans, or to pay a licensing fee.  When she refused, she was served a patent violation complaint.  By some reports, Proctor’s actions enforcing his patent have resulted in a 90% reduction in the importation of yellow beans from Mexico.

Is the Enola patent a case of ‘piracy?’  Subsequent research has shown that the Mayacoba beans imported by Gilland were not grown from Proctor’s Enola.  An article in the journal Crop Science (Pallotini et al) documents the distinct genetic origins of the two varieties.  But patent 5,894,079 apparently covers them all.  Proctor’s patent would even seem to cover beans found in ancient Mexican archeological sites, provided that they belong to the relevant species and possess color characteristics consistent with the description in the patent claim.


Patents and the Public Interest

Patents were instituted to provide an incentive for creative invention.  But when patents are misused, they can enable their bearers to remove from the public domain what ought, by right, to be the common property of all.  If we have a right to what should be in the public domain, then it is reasonable to regard this as a kind of theft.  Can we improve our patent system to make such misuse impossible, or at least difficult?  In a subsequent issue of Bioethics in Brief I will consider several proposals for patent reform.



Sources:

Bailey, Ronald. 2003. “BioPiracy and Other Myths.”  Reason Magazine. 12 Sept 2003.

Chen, J. 2006. “There’s No Such Thing as Biopiracy… And it’s a Good Thing Too.”  Minnesota Public Law Research Paper no. 05-29.  McGeorge Law Review, Vol 37.

Jaffe, A.B. and Learner, J. 2004. Innovation and its Discontents.  Princeton: Princeton University Press.

Magnus, D. 2002. “Intellectual Property and Agricultural Biotechnology: Bioprospecting or Biopiracy?”  New York: Prometheus Books. pp. 265-276.

Pallottini, L, et al. 2004. “Plant Genetic Resources: The Genetic Anatomy of a Patented Yellow Bean.”  Crop Sciences. 44:968-977.

Shiva, V. 1997. Biopiracy: The Plunder of Nature and Knowledge.  Boston: South End Press.

Tolan, Sandy. 2001. “A Bean of a Different Color.” http://americanradioworks.publicradio.org/features/food_politics/beans/print.html  Accessed: 30 March 2007



Bioethics in Brief

May 2007
Volume 9, Issue 2

Published four times per year
by the ISU Office of Biotechnology
and the Bioethics Program.
To subscribe, call 515-294-7356 or email.

Editor: Camie J. Stockhausen

Bioethics Program Coordinator: Clark Wolf

Any opinions, findings, conclusions, or recommendations expressed in this publication are those of the author(s) and do not necessarily reflect the view of the ISU Office of Biotechnology or Iowa State University.

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