BRIEF INTRODUCTION OF THE CASE STUDY
In late 1997, an American company RiceTec Inc, was granted a patent by the US patent office to call the aromatic rice variety developed in USA 'Basmati'. RiceTec Inc, had been trying to enter the international Basmati market with brands like 'Kasmati' and 'Texmati' described as Basmati-type rice with minimal success.Ultimately, the company claimed to have developed a new strain of aromatic rice by interbreeding basmati with another variety. They sought to call the allegedly new variety as Texmati or American Basmati.
This has grave repercussions for India and Pakistan because not only will India lose out US import market but also its position in crucial markets like the European Union, the United Kingdom, Middle East and West Asia. Also, the patent on Basmati is believed to be a violation of the fundamental fact that the long grains aromatic rice grown only in Punjab, Haryana, and Uttar Pradesh is called Basmati. "Patenting Basmati in the US is like snatching away India's history and Culture"
The issue of the Patent number 5663484 on Basmati rice lines and grains to RiceTec Inc on September 2, 1997 was objected to by India Government through its inter - ministerial group comprising of representative of the ministries and departments of commerce, industry, external affairs, Council for Scientific and Industrial research (CSIR), Agriculture, Bio - technology, All India rice Exporters Association (AIREA), APEDA, and Indian Council of Agricultural Research (ICAR) were mobilized to begin an in - depth examination of the case. A Delhi - based research foundation which monitors issues involving patents and biopiracy also objected to it.
The law firm representing India in the dispute, Sagar and Suri, criticized the procedures for granting patents in the US claiming it is diametrically opposite to the one followed in India and Europe. India first examines a patent application, then widely publishes it for the third parties to challenge, and only then grants the patent. The US keeps the patent application a closely guarded secret and grants the patent without allowing other parties to challenge it. After the patent has been granted, third part are then allowed to petition against the patent.
Indians claim that the US decision to grant a patent for the prized Basmati rice violates the International Treaty on Trade Related Intellectual Property Rights (TRIPS).
IMPORTANCE OF BASMATI RICE IN INDIA AND PAKISTAN ECONOMY
Rice is an important aspect of life in the Southeast and other parts of Asia. For centuries, it has been the cornerstone of their food and culture. During this period, farming communities throughout the region developed, nurtured, and conserved over a hundred thousand distinct varieties of rice to suit different tastes and needs. It is for this reason that patenting of Basmati by RiceTec Inc. is perceived as not only intellectual property and cultural theft, but it also directly threatens farm communities in Southeast Asia. According to Dr Vandana Shiva, director of a Delhi-based research foundation which monitors issues involving patents and biopiracy, the main aim for obtaining the patent by RiceTec Inc. is to fool the consumers in believing there is no difference between spurious Basmati and real Basmati. Moreover, she claims the "theft involved in the Basmati patent is, therefore, threefold: a theft of collective intellectual and biodiversity heritage on Indian farmers, a theft from Indian traders and exporters whose markets are being stolen by RiceTec Inc., and finally a deception of consumers since RiceTec is using a stolen name Basmati for rice which are derived from Indian rice but not grown in India, and hence are not the same quality."
In fact, Basmati rice has been one of the fastest growing export items from India in recent years. In the year to March 1997, India exported more than half a million tonnes of Basmati to the Gulf, Saudi Arabia, Europe and the United States, a small part of its total rice exports, but high in value. More substantively, Indian farmers export $250 million in Basmati every year and U.S. is a target market. RiceTec Inc. had attempted to sell its long-grain rice in Europe under such brand names as 'Texmati' and 'Kasmati' but not as Basmati. However, if the patent is not revoked, RiceTec Inc., can now sell its rice under the brand name Basmati which will definitely cut into India's and Pakistan's global market share, especially as the rice grown in the US could be sold cheaper than the Indian and Pakistani varieties.
THE FACTS OF THE CASE STUDY
i) Originally from India and Pakistan, Basmati became a controversial 'issue' after an American company RiceTec Inc, in 1997, patented the rice they developed outside India as "American basmati".
ii) RiceTec Inc, had been trying to enter the international Basmati market with brands like "Kasmati" and "Texmati". Ultimately, the company claimed to have developed a new strain of aromatic rice by interbreeding basmati with another variety. They sought to call the allegedly new variety as Texmati or American Basmati.
iii) RiceTec Inc, was issued the Patent number 5663484 on Basmati rice lines and grains on September 2, 1997.
iv) This was objected to by India Government through its inter - ministerial group comprising of representative of the ministries and departments of commerce, industry, external affairs, Council for Scientific and Industrial research (CSIR), Agriculture, Bio - technology, All India rice Exporters Association (AIREA), APEDA, and Indian Council of Agricultural Research (ICAR) were mobilized to begin an in - depth examination of the case. A Delhi - based research foundation which monitors issues involving patents and biopiracy also objected to it.
v) The law firm representing India in the dispute, Sagar and Suri, who won the Turmeric patent case and presently represent the government against RiceTec Inc, claimed that RiceTec got a Patent for three things:- growing rice plants with certain characteristics identical to basmati, the grain produced by such plants, and the method of selecting the rice plant based on a starch index (SI) test devised by RiceTec Inc. the lawyers plan to challenge this patent on the basis that the above mentioned plant varieties and grains already exist and thus cannot be patented.
vi) Sagar and Suri, criticized the procedures for granting patents in the US claiming it is diametrically opposite to the one followed in India and Europe. India first examines a patent application, then widely publishes it for the third parties to challenge, and only then grants the patent. The US keeps the patent application a closely guarded secret and grants the patent without allowing other parties to challenge it. After the patent has been granted, third part are then allowed to petition against the patent.
vii) Indians claim that the US decision to grant a patent for the prized Basmati rice violates the International Treaty on Trade Related Intellectual Property Rights (TRIPS).
THE ISSUES
Various issues have been raised following the controversy, the answers to which are hoped to be answered through the emerging law of patents and geographical indications. Some of the major issues are:
i) Whether the term 'basmati' is a generic one to describe aromatic rice, or does it refer specifically to the long aromatic rice grown in India and Pakistan?
ii) Whether the rice invented by RiceTec is a novelty?
iii) Whether RiceTec is guilty of biopiracy?
iv) Whether US government's decision to grant a patent for the prized Basmati rice violates the International Treaty on Trade Related Intellectual Property Rights (TRIPS)?
v) Whether the basmati patent should be revoked in the light of protests from India?
vi) Whether the patent granted to was RiceTec Inc based on the characteristics of invention to be registered under patent?
vii) Whether vizturmeric, neem, and the name basmati can be patented?
CASE ANALYSIS
RiceTec got a patent for three things:
a) Growing rice plants with certain characteristics identical to Basmati
b) The grain produced by such plants
c) The method of selecting rice based on a starch index (SI) test devised by RiceTec, Inc.
The patent was challenged on the fact that the plant varieties and grains already exist as a staple in India. 75 percent of U.S. rice imports are from Thailand and that the remainder is from India and Pakistan and both varieties are rice that cannot be grown in the United States.
My analysis starts by explaining the meaning of Biopiracy, conditions required for Inventions to be patented, TRIP Agreement, Geographical indications, Patent law in US and Patent law in India.
ØBiopiracy
Bio piracy is a situation where indigenous knowledge of nature, originating with indigenous peoples, is used by others for profit, without permission from and with little or no compensation or recognition to the indigenous people themselves.
ØConditions required for Inventions to be patented
Inventions can only be patented if they satisfy three criteria:
· Novelty:
Only inventions that are genuinely new, and not part of existing knowledge, can be patented.
· Non-obviousness:
If the new invention is obvious, i.e. anyone familiar with the subject could easily anticipate the invention, then it cannot be patented.
· Utility:
The invention has to work in practice. [/b]
ØTRIP Agreement
TRIPS is one of the agreements under the World Trade Organisation (WTO) that nations that are members of the WTO are supposed to adhere to. Prior to the formation of the WTO, the General Agreement on Trade and Tariffs, 1947 (GATT) laid down the rules for free trade in goods. In 1985 a new round of trade negotiations began at Panta Del Este in Uruguay which concluded in 1994 at Marrakesh in Morocco with the formation of the WTO and the acceptance of a package of agreements under it. Among the detailed agreements under the WTO umbrella are GATT (which establishes general rules for trade in goods), GATS (which deals with rules in services) and TRIPS (which concerns trade in intangible property). A convention that took place in Doha as part of a review of these agreements resulted in the Doha Declaration on Public Health. [/b]
ØGeographical indications
Geographical indication is a form of Intellectual Property Right (IPR) included along with other IPR forms like Patents, Copyrights and Trademarks, in the Trade related Intellectual Property Right (TRIPs) section of GATT/WTO. This clause, found in Articles 22, 23, 24 of section 3 of TRIPs, deals with the protection of goods that are geographically indicated. The Geographical Indicated Protection has been specially conceived for well-known specialty products which are associated with particular region.
A geographical indication is a geographical name signifying that a product originates in a country or a specific locality where it has been traditionally produced. While a trademark is a matter of private law, a geographical indication would be under public law and cannot be owned by a single group of individuals; anyone who produces the said goods in that region can use the geographical indicator for the product. Like trademark, geographical indication is valuable to providence. It is a 'source identifier' and indicator of quality". It helps to promote goods of particular region or country and "eligible for relief from acts of infringement and/or unfair competition".
Most geographical indications relate to agricultural products or those derived from them, as in the case of wines and spirits. Protection of such marks prevents third parties from passing off their products as those originating in the given region. Famous examples are 'Champagne' for sparkling wine and 'Roquefort' for cheese from areas of these names in France or 'Darjeeling' for tea from this district in India. It is not necessary for these indications to be geographical names as in the case of 'Feta' for cheese from Greece or 'Basmati' for rice from India and Pakistan as there are no places, localities or regions with these names. Plant varieties developed with traditional knowledge and associated with a particular region can also be protected, as geographical indications. The advantage in such protection is that it is not time-limited, unlike the case of plant patents or plant breeders' rights. However, needless to say, commercial benefits can be derived from the protection of geographical indications only when the name becomes reasonably famous.
ØPatent law in United States
Patents in the United States are governed by the Patent Act (35 U.S. Code), which established the United States Patent and Trademark Office (the USPTO). The most common type of patent is a utility patent. To obtain protection under U.S. law, the applicant must submit a patent application to the USPTO, where it will be reviewed by an examiner to determine if the invention is patentable. U.S. law grants to patentees the right to exclude others from making, using, or selling the invention.
Section 101 of the U.S. Patent Act sets forth the general requirements for patent protection in a single sentence:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title"
Unfortunately, the actual test for patentability is a bit more complicated than this sentence suggests. Under U.S. patent law, an invention is patentable only if it meets the following four requirements:
· The invention must be statutory
· The invention must be new
· The invention must be useful
· The invention must be non-obvious
ØPatent law in India
The Patent system in India is governed by the Patents Act, 1970 (No 39 of 1970) & The Patents Rules 1972, effective from April 20,1972. Subsequently The Patents Act, 1970 is amended effective from January 1, 1995 & The Patents Rules, 1972 is amended effective from June 2, 1999, 2002 and 2005.
Application may be made, either alone or jointly with another, by the inventor, assignee, legal representative of deceased inventor or assignee. The inventor is entitled to be mentioned in the patent if he applies to do so.
The followings are not patentable:-
· An invention that is frivolous or that claims anything obviously contrary to well-established natural laws;
· An invention the primary or intended use of which would be contrary to law or morality or injurious to public health;
In late 1997, an American company RiceTec Inc, was granted a patent by the US patent office to call the aromatic rice variety developed in USA 'Basmati'. RiceTec Inc, had been trying to enter the international Basmati market with brands like 'Kasmati' and 'Texmati' described as Basmati-type rice with minimal success.Ultimately, the company claimed to have developed a new strain of aromatic rice by interbreeding basmati with another variety. They sought to call the allegedly new variety as Texmati or American Basmati.
This has grave repercussions for India and Pakistan because not only will India lose out US import market but also its position in crucial markets like the European Union, the United Kingdom, Middle East and West Asia. Also, the patent on Basmati is believed to be a violation of the fundamental fact that the long grains aromatic rice grown only in Punjab, Haryana, and Uttar Pradesh is called Basmati. "Patenting Basmati in the US is like snatching away India's history and Culture"
The issue of the Patent number 5663484 on Basmati rice lines and grains to RiceTec Inc on September 2, 1997 was objected to by India Government through its inter - ministerial group comprising of representative of the ministries and departments of commerce, industry, external affairs, Council for Scientific and Industrial research (CSIR), Agriculture, Bio - technology, All India rice Exporters Association (AIREA), APEDA, and Indian Council of Agricultural Research (ICAR) were mobilized to begin an in - depth examination of the case. A Delhi - based research foundation which monitors issues involving patents and biopiracy also objected to it.
The law firm representing India in the dispute, Sagar and Suri, criticized the procedures for granting patents in the US claiming it is diametrically opposite to the one followed in India and Europe. India first examines a patent application, then widely publishes it for the third parties to challenge, and only then grants the patent. The US keeps the patent application a closely guarded secret and grants the patent without allowing other parties to challenge it. After the patent has been granted, third part are then allowed to petition against the patent.
Indians claim that the US decision to grant a patent for the prized Basmati rice violates the International Treaty on Trade Related Intellectual Property Rights (TRIPS).
IMPORTANCE OF BASMATI RICE IN INDIA AND PAKISTAN ECONOMY
Rice is an important aspect of life in the Southeast and other parts of Asia. For centuries, it has been the cornerstone of their food and culture. During this period, farming communities throughout the region developed, nurtured, and conserved over a hundred thousand distinct varieties of rice to suit different tastes and needs. It is for this reason that patenting of Basmati by RiceTec Inc. is perceived as not only intellectual property and cultural theft, but it also directly threatens farm communities in Southeast Asia. According to Dr Vandana Shiva, director of a Delhi-based research foundation which monitors issues involving patents and biopiracy, the main aim for obtaining the patent by RiceTec Inc. is to fool the consumers in believing there is no difference between spurious Basmati and real Basmati. Moreover, she claims the "theft involved in the Basmati patent is, therefore, threefold: a theft of collective intellectual and biodiversity heritage on Indian farmers, a theft from Indian traders and exporters whose markets are being stolen by RiceTec Inc., and finally a deception of consumers since RiceTec is using a stolen name Basmati for rice which are derived from Indian rice but not grown in India, and hence are not the same quality."
In fact, Basmati rice has been one of the fastest growing export items from India in recent years. In the year to March 1997, India exported more than half a million tonnes of Basmati to the Gulf, Saudi Arabia, Europe and the United States, a small part of its total rice exports, but high in value. More substantively, Indian farmers export $250 million in Basmati every year and U.S. is a target market. RiceTec Inc. had attempted to sell its long-grain rice in Europe under such brand names as 'Texmati' and 'Kasmati' but not as Basmati. However, if the patent is not revoked, RiceTec Inc., can now sell its rice under the brand name Basmati which will definitely cut into India's and Pakistan's global market share, especially as the rice grown in the US could be sold cheaper than the Indian and Pakistani varieties.
THE FACTS OF THE CASE STUDY
i) Originally from India and Pakistan, Basmati became a controversial 'issue' after an American company RiceTec Inc, in 1997, patented the rice they developed outside India as "American basmati".
ii) RiceTec Inc, had been trying to enter the international Basmati market with brands like "Kasmati" and "Texmati". Ultimately, the company claimed to have developed a new strain of aromatic rice by interbreeding basmati with another variety. They sought to call the allegedly new variety as Texmati or American Basmati.
iii) RiceTec Inc, was issued the Patent number 5663484 on Basmati rice lines and grains on September 2, 1997.
iv) This was objected to by India Government through its inter - ministerial group comprising of representative of the ministries and departments of commerce, industry, external affairs, Council for Scientific and Industrial research (CSIR), Agriculture, Bio - technology, All India rice Exporters Association (AIREA), APEDA, and Indian Council of Agricultural Research (ICAR) were mobilized to begin an in - depth examination of the case. A Delhi - based research foundation which monitors issues involving patents and biopiracy also objected to it.
v) The law firm representing India in the dispute, Sagar and Suri, who won the Turmeric patent case and presently represent the government against RiceTec Inc, claimed that RiceTec got a Patent for three things:- growing rice plants with certain characteristics identical to basmati, the grain produced by such plants, and the method of selecting the rice plant based on a starch index (SI) test devised by RiceTec Inc. the lawyers plan to challenge this patent on the basis that the above mentioned plant varieties and grains already exist and thus cannot be patented.
vi) Sagar and Suri, criticized the procedures for granting patents in the US claiming it is diametrically opposite to the one followed in India and Europe. India first examines a patent application, then widely publishes it for the third parties to challenge, and only then grants the patent. The US keeps the patent application a closely guarded secret and grants the patent without allowing other parties to challenge it. After the patent has been granted, third part are then allowed to petition against the patent.
vii) Indians claim that the US decision to grant a patent for the prized Basmati rice violates the International Treaty on Trade Related Intellectual Property Rights (TRIPS).
THE ISSUES
Various issues have been raised following the controversy, the answers to which are hoped to be answered through the emerging law of patents and geographical indications. Some of the major issues are:
i) Whether the term 'basmati' is a generic one to describe aromatic rice, or does it refer specifically to the long aromatic rice grown in India and Pakistan?
ii) Whether the rice invented by RiceTec is a novelty?
iii) Whether RiceTec is guilty of biopiracy?
iv) Whether US government's decision to grant a patent for the prized Basmati rice violates the International Treaty on Trade Related Intellectual Property Rights (TRIPS)?
v) Whether the basmati patent should be revoked in the light of protests from India?
vi) Whether the patent granted to was RiceTec Inc based on the characteristics of invention to be registered under patent?
vii) Whether vizturmeric, neem, and the name basmati can be patented?
CASE ANALYSIS
RiceTec got a patent for three things:
a) Growing rice plants with certain characteristics identical to Basmati
b) The grain produced by such plants
c) The method of selecting rice based on a starch index (SI) test devised by RiceTec, Inc.
The patent was challenged on the fact that the plant varieties and grains already exist as a staple in India. 75 percent of U.S. rice imports are from Thailand and that the remainder is from India and Pakistan and both varieties are rice that cannot be grown in the United States.
My analysis starts by explaining the meaning of Biopiracy, conditions required for Inventions to be patented, TRIP Agreement, Geographical indications, Patent law in US and Patent law in India.
ØBiopiracy
Bio piracy is a situation where indigenous knowledge of nature, originating with indigenous peoples, is used by others for profit, without permission from and with little or no compensation or recognition to the indigenous people themselves.
ØConditions required for Inventions to be patented
Inventions can only be patented if they satisfy three criteria:
· Novelty:
Only inventions that are genuinely new, and not part of existing knowledge, can be patented.
· Non-obviousness:
If the new invention is obvious, i.e. anyone familiar with the subject could easily anticipate the invention, then it cannot be patented.
· Utility:
The invention has to work in practice. [/b]
ØTRIP Agreement
TRIPS is one of the agreements under the World Trade Organisation (WTO) that nations that are members of the WTO are supposed to adhere to. Prior to the formation of the WTO, the General Agreement on Trade and Tariffs, 1947 (GATT) laid down the rules for free trade in goods. In 1985 a new round of trade negotiations began at Panta Del Este in Uruguay which concluded in 1994 at Marrakesh in Morocco with the formation of the WTO and the acceptance of a package of agreements under it. Among the detailed agreements under the WTO umbrella are GATT (which establishes general rules for trade in goods), GATS (which deals with rules in services) and TRIPS (which concerns trade in intangible property). A convention that took place in Doha as part of a review of these agreements resulted in the Doha Declaration on Public Health. [/b]
ØGeographical indications
Geographical indication is a form of Intellectual Property Right (IPR) included along with other IPR forms like Patents, Copyrights and Trademarks, in the Trade related Intellectual Property Right (TRIPs) section of GATT/WTO. This clause, found in Articles 22, 23, 24 of section 3 of TRIPs, deals with the protection of goods that are geographically indicated. The Geographical Indicated Protection has been specially conceived for well-known specialty products which are associated with particular region.
A geographical indication is a geographical name signifying that a product originates in a country or a specific locality where it has been traditionally produced. While a trademark is a matter of private law, a geographical indication would be under public law and cannot be owned by a single group of individuals; anyone who produces the said goods in that region can use the geographical indicator for the product. Like trademark, geographical indication is valuable to providence. It is a 'source identifier' and indicator of quality". It helps to promote goods of particular region or country and "eligible for relief from acts of infringement and/or unfair competition".
Most geographical indications relate to agricultural products or those derived from them, as in the case of wines and spirits. Protection of such marks prevents third parties from passing off their products as those originating in the given region. Famous examples are 'Champagne' for sparkling wine and 'Roquefort' for cheese from areas of these names in France or 'Darjeeling' for tea from this district in India. It is not necessary for these indications to be geographical names as in the case of 'Feta' for cheese from Greece or 'Basmati' for rice from India and Pakistan as there are no places, localities or regions with these names. Plant varieties developed with traditional knowledge and associated with a particular region can also be protected, as geographical indications. The advantage in such protection is that it is not time-limited, unlike the case of plant patents or plant breeders' rights. However, needless to say, commercial benefits can be derived from the protection of geographical indications only when the name becomes reasonably famous.
ØPatent law in United States
Patents in the United States are governed by the Patent Act (35 U.S. Code), which established the United States Patent and Trademark Office (the USPTO). The most common type of patent is a utility patent. To obtain protection under U.S. law, the applicant must submit a patent application to the USPTO, where it will be reviewed by an examiner to determine if the invention is patentable. U.S. law grants to patentees the right to exclude others from making, using, or selling the invention.
Section 101 of the U.S. Patent Act sets forth the general requirements for patent protection in a single sentence:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title"
Unfortunately, the actual test for patentability is a bit more complicated than this sentence suggests. Under U.S. patent law, an invention is patentable only if it meets the following four requirements:
· The invention must be statutory
· The invention must be new
· The invention must be useful
· The invention must be non-obvious
ØPatent law in India
The Patent system in India is governed by the Patents Act, 1970 (No 39 of 1970) & The Patents Rules 1972, effective from April 20,1972. Subsequently The Patents Act, 1970 is amended effective from January 1, 1995 & The Patents Rules, 1972 is amended effective from June 2, 1999, 2002 and 2005.
Application may be made, either alone or jointly with another, by the inventor, assignee, legal representative of deceased inventor or assignee. The inventor is entitled to be mentioned in the patent if he applies to do so.
The followings are not patentable:-
· An invention that is frivolous or that claims anything obviously contrary to well-established natural laws;
· An invention the primary or intended use of which would be contrary to law or morality or injurious to public health;