May 27, 2008
University of California, Davis
A UC Davis plant scientist played
a key role in settling a controversial intellectual property
dispute that resulted in the recent rejection of a nine-year-old
U.S. patent for a common yellow bean that originated in Mexico.
Professor Paul Gepts, an expert on the processes that have
shaped the evolution of crop plants, along with colleagues from
the University of Padova, Italy, used DNA fingerprinting in 2004
to show that the yellow Enola bean was identical to a bean
variety grown in Mexico.
The results of that DNA analysis were published in the May-June
2004 issue of the journal Crop Science.
DNA fingerprinting is a process that analyzes fragments of DNA
-- molecules that carry the genetic information of living
organisms -- to identify the unique genetic makeup of an
individual plant or animal.
The story began in the 1990s when a Colorado man purchased some
beans in a market in Mexico and brought the beans back to the
United States. After growing the beans, which are similar to
small kidney beans, for several seasons, the man claimed to have
developed a new field bean variety with a distinct pale yellow
seed color. He called the variety the "Enola" bean and filed a
In 1999, the United States Patent and Trademark Office granted
20-year patent protection for the Enola variety. But the
legality of that patent was later challenged, amid international
accusations that the case was a prime example of biopiracy and
abuse of intellectual property rights. Five years later, Gepts
and colleagues applied DNA technology to genetically determine
whether the bean was truly a new variety or simply a new
generation of an existing variety.
"The analysis showed that the Enola bean was produced through
direct selection of pre-existing yellow-bean varieties from
Mexico, most likely a bean known as "Azufrado Peruano 87," said
Gepts. "In short, the Enola was not a novel variety and
therefore not eligible for patent protection."
The Enola bean patent was rejected by the patent office in 2003
and 2005, but those decisions were appealed to the Board of
Patent Appeals and Interferences. The final rejection of all
patent claims for the Enola bean came on April 30 of this year,
although the patent owner can still appeal this decision to
nullify the patent.
In addition to the DNA fingerprinting by Gepts and colleagues,
opponents of the patent pointed out that the Enola bean did not
have a unique yellow color that the applicant claimed and that
the patent claims were based on research information that was
already publicly available in scientific literature.