Notes prepared for the presentation in the class "Intellectual Property in Food and Agriculture", LL.M. in Agricultural and Food Law, University of Arkansas School of Law

1. Swartzia Madagascariensis Controversy
Class: Intellectual Property in Food & Agriculture
Issue study by Mark Opanasiuk
1. What is the issue in the case?
This case is about access and usage of genetic resources and traditional knowledge
from Zimbabwe without fair benefit distribution between all stakeholders. The traditional
knowledge of Zimbabwean healers about Swartzia Madagascariensis plant qualities and its
genetic material obtained in violation of existing rules of international law were used by the
Swiss university and American company to receive a patent in the US.
2. How and why did the problem arise?
The controversy has roots in the mid-1980s. One of a graduate students at the
University of Lausanne in Switzerland was doing research on how the seed pods of Swartzia
Madagascariensis (snake-bean tree) kill some snails. It was noticed that the tree’s root bark
collected from Tanzania, Malawi and Panama killed fungus in lab tests. Snake-been tree is
growing in many countries including Zimbabwe [4].
In 1995 the University of Lausanne signed an agreement with Zimbabwe’s National
University and botanical garden to get access to more than 5.000 species of plants used by that
country’s traditional healers, including snake bean tree. The Agreement stipulated that in the
event of finding any product which may require the application of intellectual property rights, this
will be subject of joint negotiation and joint application for any patent filed [1].
Using the snake-been-root bark another Swiss graduate student soon isolated the
fungus-killing molecule. Instead of publishing the findings professor Hostettmann in 1996 signed
a contract with american pharmaceutical company Phytera Inc., in which the Worcester, Mass.,
firm agreed to test and develop the compound for commercial use.
In 1997 Professor Hostettmann and the student who isolated the molecule applied for
the U.S. patent. The patent application did not include Zimbabwean. American lawyers advised
to exclude the Zimbabwean botanist from Stephen Mavi from the application because he hadn't
taken part in the laboratory research. The Swiss advised Mr. Mavi and the then-chairman of the
African university's pharmacy department, Farai Chinyanganya, in advance that no individual
Zimbabwean would appear on the patent. But Mr. Chinyanganya says the Swiss assured him
the patent would instead name the Zimbabwean university and botanical garden [4].
In April 1997, just before the submitting patent application, the American pharmaceutical
company Phytera and the University of Lausanne signed an addendum to a material transfer
and confidentiality agreement, under which Phytera received an option for an exclusive
worldwide license and in return agreed to pay royalties of 1.5% on the net sales of any product
marketed under this license. Professor Hostettmann, on the other hand, was obliged to give
50% of any royalties received to the National Herbarium and Botanical Garden of Zimbawe and
to the Department of Pharmacy at the University of Zimbabwe [2].
On July 27, 1999, the United States granted the Swiss scientists Patent 5,929,124,
which applies broadly to antimicrobial uses of snake-bean-tree compounds. Zimbabwean
government officials and traditional healers didn't find out about it until last September, alerted
by a Swiss environmental activist from NGO Berne Declaration who saw a British news story in
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2. which Mr. Hostettmann boasted of the compound's commercial potential to treat thrush and
athlete's foot. The Zimbabwean government and traditional healers did not participate in the
negotiation process between two Universities. Zimbabwe has around 55,000 traditional healers
who use snake-bean tree in their everyday healing and traditional practices [4].
The environmental activists from Switzerland and Zimbabwe, together with traditional
healers (represented by Zimbabwe National Traditional Healers Association) demanded to
suspend the existing agreement between two Universities for the following reasons:
• The government was not party to that agreement as required by the Convention on Biological
Diversity (CBD) [3]. The Convention on Biological Diversity, signed by Zimbabwe and
Switzerland, states in article 15 that access to genetic resources shall be subject to prior
informed consent of the contracting party. In Zimbabwe the mandate and the authority to
allow access to genetic resources lies with the Ministry of Environment. But the Ministry never
signed a contract with the Universitiy of Lausanne, nor was there any contract which shifts
the mandate from the Ministry to the University of Zimbabwe, which helped the University of
Lausanne to get legal access to the resources [2].
• The benefit sharing mechanisms and frameworks of the agreement were not consistent with
common practice. There are no provisions for a future benefit-sharing agreement if a product
is commercialized. The University of Zimbabwe did not take part in the negotiation process
between the University of Lausanne and Phytera.
• Under the signed agreement only the University of Zimbabwe is a beneficiary, thus
marginalizing other stakeholders such as traditional healers and the government. For
example, it was Zimbabwe National Traditional Healers Association (ZINATHA) which had
submitted a number of samples of their medicines to the University of Zimbabwe for analysis.
But no one has consulted them in Zimbabwe on whether they agree with the agreement.
• It seems that access to medicinal plants was granted to the University of Lausanne at less
than a fair value. The amount negotiated between the University of Lausanne and Phytera is
very low compared to other benefit sharing agreements. The average range of royalties on
net sales for materials with value added data such as ethnobotanical information is 14%
(tenKate/Laird 1999), including exceptional cases of up to 50% (in a contract between the
Swiss Federal Institute of Technology and Venezuela) [3].
• The current agreement has no mechanism to acknowledge and compensate the use of
traditional knowledge systems [3]. It is a common problem in many cases. Current patenting
system under TRIPS protects the property rights of whoever seeks a patent first —often big
companies — and makes no mention of sharing benefits with provider countries [4].
On the other hand the Swiss argued that their discovery had little to do with traditional
Zimbabwean practices and that they conducted sophisticated research that Zimbabwean
scientists aren't equipped to do [4]. Prof. Hostettmann said he had been investigating the
potential as a fungicide of the root bark of swartzia madagascariensis as far back as 1990 when
he had no contact with Zimbabwe, and by 1994, he had already been able to isolate the active
constituent. He said the samples gathered in Zimbabwe confirmed what he had already
discovered [1].
3. What international treaties were at play?
1. AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY
RIGHTS (1995) — this controversy shows a conflict between the TRIPS IP protection and
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3. patents regime and protection of traditional knowledge and biological resources under the
Convention on Biological Diversity (1992)
2. CONVENTION ON BIOLOGICAL DIVERSITY (1992) — CBD in Article 15 deals with
access to the genetic resources. The Swiss University received the access in violation with CBD
provisions.
4. How was the matter resolved?
In 2001 the University of Lausanne has agreed to renegotiate a controversial agreement
over the use of Zimbabwe's medicinal and poisonous plants. Also the Swiss have agreed to
explore amending the patent registration in the US and to include the University of Zimbabwe
and the botanical garden. The University of Zimbabwe and the botanical garden have agreed to
negotiate some compensation for the healers [1].
5. Was the matter satisfactorily resolved?
In my opinion this controversy was not adequately resolved.
The University of Zimbabwe and the botanical garden did not trust the Lausanne
University anymore and all further plant transfers were abandoned. The Swiss University had
almost run out of all available supply of purified compound of snake-bean-root bark. The
remains are not sufficient for further research. Also the University did not perform any new
research because of possible further accusations from the Zimbabwean parties. At that moment
the Swiss say they had spent around $300k on research. Phytera, inc. also stopped its
research. The company’s limited laboratory tests with plant compound’s qualities to kill fungus
showed the toxicity of the plant in mammalian cells and for live mice. The company didn't test
the compound for its ability to kill other microbes, and both Swiss and Zimbabwean scientists
continue to believe the snake-bean compound could work as a topical anti-fungal cream, an
antiviral agent, or perhaps a malaria remedy. But there were no further cooperation [4].
On September 23, 2003 the patent 5,929,124 become expired due to the failure to pay
maintenance fee. It shows that no amendments were made to include the Zimbabwean in the
patent. Since the expiration date the patent was referenced in 11 other patents about antifungus
activities [5].
Used sources:
1. Vincent Landon, Lausanne University agrees to settle "biopiracy" case, dd. March 5, 2001,
available at: http://www.swissinfo.ch/eng/lausanne-university-agrees-to-settle--biopiracy--
case/1919742
2. NGOs Condemn Biopiracy by Swiss University: The Selfish Interpretation of the Convention
on Biological Biodiversity by the University of Lausanne, Switzerland, dd. September 22,
2000, available at: http://www.iatp.org/files/
NGOs_Condemn_Biopiracy_by_Swiss_University_The.htm
3. Chakravarthi Raghavan, Bio-piracy in Zimbabwe, patenting by Swiss university denounced,
dd. April 26, 2001, available at: http://www.twn.my/title/denounced.htm
4. Michael M. Phillips, Bitter Remedies: The search for plants that heal generates international
feuding, dd. June 8, 2001, available at: http://www.lind.org.zw/people/herbs/snake_bean.htm
5. Antimicrobial diterpenes, patent US 5929124 A, available at: http://www.google.com/patents/
US5929124
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