The
Controversial Patent
The RiceTec company got a patent in September 1997 on the basis of
20 claims. The company had named these rice lines as `basmati rice
lines and grains'. On the basis of this patent it had received in
the US for a plant having charateristics similar to Basmati, Rice
Tec applied for registration of "TEXMATI" with the UK Trademark Registry
in 1997. India put in a re-examination request in April 2000. It took
two years of hard work to put together the data.
The basmati saga has had a turbulent history ever since the perceived
transgression in the mid-1990s was reported after seeing Ricetec brands
such as Texmati and Jasmati on the shelves of grocery chain stores.
At that time, Ricetec, a relatively small grain research company based
in Alvin, Texas had applied for a wide range of patents from seeds
to tissue culture to progeny of plants.
Following a firestorm of protests, the case came up before the US
Patent Office, then headed by Larry Goffney, an African-American official
in the Clinton administration who happened to be a great Indophile.
The issue simmered down after Ricetec backed down on some of its claims.
The remaining claims were challenged by Minneapolis-based law firm
Merchant and Gould on behalf of an unnamed third party, presumably
at the behest of the Government of India and grain growers and merchants
in India, after which the matter came up for re-examination.
RiceTec had in all made 20 claims in its patent application related
to the cross-bred rice lines and grains developed by it. The patent
relates to novel rice line, method of making it and a method of estimating
rice quality. Claims 1 to 14 of the patent broadly defined the characteristics
of rice plants when grown in North, South and Central America or Caribbean
Islands and their various aspects - plants, seeds and progeny. Claims
15 to 17 of the patent defined rice grains without any limitation
or territory. Claims 18 to 20 described the method used by RiceTec
to develop the rice lines.
From India's point of view, claims 15 to 17 were the most threatening
because they were for a grain with the Basmati characteristics. These
claims were so broad that they included 90 per cent of rice germplasm
and even traditional rice lines like Bas 370, Taraori, Basmati and
Karnal local. If legally enforced, this claim would have hindered
Basmati exports to the US. India thus strategically challenged these
three important claims out of the total 20 claims on April 28,2000
requesting the US patent office to re-examine the 1997 patent. The
Indian response took two years to formulate because of the complexities
of Rice Tec's claims. But it was finally filed against the three critical
claims. The evidence furnished was germplasm from the collection of
the Directorate of Rice Research in Hyderabad and declarations by
Indian scientists on grain characteristics.
Following India's challenge, Ricetec surrendered claims 15 to 17
as also claim 4. Although Ricetec surrendered the offending claims
15 to 17, the US patent office found, based on all documents submitted
by APEDA, that "a substantial question of patentability" affected
all the remaining 16 claims. Hence, the US patent office issued a
notice to Ricetec on March 27, 2001. In response to the notice, RiceTec
withdrew the claims to the patent, except claims 8,9,11,12 and 13
which related to specific rice lines developed by Ricetec and not
to any varieties grown in India. Thus, the US patent office, on re-examination,
decided to make them withdraw another 11 claims. That left only five
claims, which are reportedly of no serious consequence to Indian commercial
interests. What Rice Tec is asked for from the US Patent Office is
the right to protect specific rice lines and their progeny and the
grains of specific crosses. These are innovations resulting from the
firm's own research. They have nothing to do with Basmati and there
is no claim to this effect either.
John Doll, Director of Biotechnology at the USPTO, said the patents
offered "a very narrow protection of a hybrid plant" and in no way
impinged on the original Indian basmati strain. He informed that "the
original basmati is definitely protected by this patent having been
changed. We rejected claims on the on the generic strain and Ricetec
cancelled the claim in response to our rejection. They never had any
right over India's basmati," Doll said. What the verdict does is afford
protection to Ricetec for the three strains of basmati it has developed
and which are "patently and noticeably different." In a nutshell,
the basmati patent (US5663484) is for novel rice lines generated by
crossing a Pakistani basmati variety with an American semi-dwarf long
rice grain variety.
The significance of this patent is that basmati cannot be readily
grown in cold countries. The differences on the basis of which the
patents were issued to Ricetec's basmati are sturdy and photo-period
insensitivity - that is, it is engineered to flower and fruit differently
because of the shorter days in this part (in US) of the world. The
plant is also much shorter than the original basmati to enable it
survive high winds. And the yield (3000lbs to 10000 lbs per acre)
is far greater than the original basmati. The new ric eline is claimed
to be disease tolerant. Further, it is also claimed that basmati has
the drawback of appearing chalky and is subject to breakage which
the new rice is not. Right now they claim no tests can predict whether
the rice can be cooked to firmness like traditional basmati. However,
the method seems to be based on starch index which is a well known
method.
Thus, USPTO on August 14 upheld US company RiceTec Inc's patent on
three rice lines developed by it, prohibiting, however, the company
from using the term `basmati'. Thus, officials in India maintain that
RiceTec has not got any patent on Basmati. It would only be fair to
put the fact in proper perspective by saying that the US patent office
has now restricted the "wide-scoped" patent it granted to RiceTec
in 1997 to only three specific rice strains developed by the US company,
which are not related to any of the varieties grown in India. ....more
