Concerns over the exploitation of traditional knowledge through the use of intellectual property rights have received increasing attention over the past few decades. During this time indigenous groups, human rights organisations, and the governments of developing countries have invested significant resources in order to challenge individual private IP claims to cultural practices. Such challenges, however, are often limited to patent litigation, a costly pursuit in which standing may be difficult to show, or requests for patent reexamination. One of the earliest successful such attempts relied upon the latter process and involved a patent claim relating to the wound-healing properties of the turmeric plant. The revocation of this patent is widely cited as the first successful attempt to reverse bio-pirating activities and has had significant impacts on international trade and intellectual property laws.

The turmeric plant (scientific name curcuma longa L., Zingiberaceae) is a flowering plant with a rhizomatic root structure that is thought to be indigenous to south and southeast Asia. Its root structure is typically ground into a powder and used either as a cooking spice and in traditional medical systems, such as Ayurveda, to prevent inflammation and infection. The patent for turmeric was based upon the research of two Indian-born faculty at the University of Mississippi Medical Center; Dr. Suman K. Das and Dr. Hari Har P. Cohly. In a discussion with Science published September 5, 1997, Das admitted he had known of the traditional uses for turmeric in India and had decided to test its efficacy using biomedical metrics. His first research on turmeric was conducted with rats and showed promising results. The research then moved to the second stage in which Das and Cohly organized a clinical trial involving human patients. Upon the findings of the last study, which showed that the use of turmeric could be used to improve some previously untreatable conditions in humans, Das and Cohly decided to apply for patent protection. According to Das, “we felt that the compound should be popularized... and the only way to do that in [the USA] is by developing it and you cannot do that without a patent”. Thus, in 1995 the United States Patent and Trademark Office (USPTO) granted a patent (Patent No. 5,401,504) to the University of Mississippi Medical Center for the use of turmeric in facilitating the healing of wounds. In the application Das and Cohly were identified as the inventors.

Knowledge of the grant of the turmeric patent soon reached both members of the media and bureaucrats in the Government of India (GOI) sparking confusion that such a claim was possible to a widely known practice that had existed for thousands of years. The confusion quickly turned to outrage and India’s Council for Scientific and Industrial Research (CSIR), with the backing of other government agencies, decided to mount a challenge to the turmeric patent. This challenge, often described in the press as a complex legal battle fought by CSIR, provides an interesting insight into patent reexamination and revocation practices at the end of the twentieth century.

Once CSIR decided to pursue the issue they contacted the Government of India’s private sector legal representatives to mount the challenge to the turmeric patent. At this time in the United States there were limited means available to an external party who wished to challenge the grant of a patent. The primary means, and the route chosen by the lawyers representing the GOI interests, was to file an ex parte request for reexamination with the USPTO. In this request an outside party asks the USPTO to reassess the validity of the patent claim and may introduce evidence that the patent was improperly given (i.e., that the patent failed to meet the standards of novelty, invention, and usefulness or that the subject of the patent fell into a subject category protected through legislation). From this point forward the reexamination process involves only a USPTO patent examiner, typically the one who initially approved the claim application, and the grantee of the patent. In other words, in the case of the turmeric patent reexamination, the GOI and its representatives were merely spectators to the legal proceedings.

This is not to say, however, that India, as a government or as a people, were wholly helpless in the reexamination matter. Firstly, several activists, such as Vandana Shiva, and international media outlets decried the continued biopiracy of the developing world by countries such as the United States. Secondly, the GOI’s lawyers conducted a prior art search of Indian texts to demonstrate that the use of turmeric in wound healing had in fact been well known prior to the approval of the patent application in 1995. These documents ranged in age from several decades to more than a century and were in several languages native to the South Asian subcontinent, such as Hindi, Sanskrit, and Urdu, and not understood by the typical USPTO patent examiner. In order to make these documents accessible the GOI’s lawyers spent significant funds, in fact the majority of the entire cost of the challenge, obtaining certified English translations of thirty-two instances of prior art. These translations, along with copies of the original texts, were submitted to the USPTO at the same time of the reexamination claim. Finally, the outrage provoked by the turmeric patent and the media attention it drew caused the USPTO to take the reexamination process seriously. In doing this, the USPTO assigned a new patent examiner to the reexamination proceedings, an unusual event, who was of Indian origin.

Though the turmeric patent was eventually revoked in 1997 the legislatively defined process did not allow for the full participation of the GOI or its legal representatives. As an ex parte entity the GOI could simply request that the reexamination take place. It was only through extra-judicial and extra-legal avenues - such as international relationships, media scrutiny, and outspoken activists - that the USPTO was required to take the process seriously. Unfortunately, not every indigenous group or developing country suffering instances of biopiracy can hope to replicate this type of pressure on the USPTO. Instead, they must rely upon taking a more active role in the patent reexamination process. An option was made available in 1999 with legislation permitting inter partes participation in which a third party may directly challenge the grant of a patent. Though this option is not ideal, and typically involves the investment of more resources than ex parte proceedings, it can be seen as an improvement over the previous regime.

** This material is based upon work supported by the University of California Pacific Rim Research Program (UC PRRP) for Project 06 T PRRP 09 0017 and the Wenner Gren Foundation Dissertation Fieldwork Grant Program. Any opinions, findings and conclusions or recomendations expressed in this material are those of the author(s) and do not necessarily reflect the views of either the UC PRRP or the Wenner Gren Foundation.

tags: United States education

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