This document summarizes the patent requirements in the US and how they discriminate against indigenous groups. The key requirements are that an invention must be novel, non-obvious, and useful. However, prior use or knowledge of an invention in other countries is not considered, which disadvantages indigenous populations whose traditional knowledge is not typically published. This is illustrated by the case of an American obtaining a patent on ayahuasca, a sacred vine used for generations by indigenous Amazonian tribes, despite their prior use and knowledge of it. The patent was eventually overturned due to protests from indigenous groups.

1. Presented by : KOMAL MUDGAL
(A)
Enroll. No: A0989216015
Patenting of
plants in USA

2.  The patent laws usually require that, for an invention to be
patentable, it must be:
 Patentable subject matter, i.e., a kind of subject-matter
eligible for patent protection
 Novel (i.e. at least some aspect of it must be new)
 Non-obvious (in United States patent law) or involve an
inventive step (in European patent law)
 Useful (in U.S. patent law) or be susceptible of industrial
application (in European patent law)

3.  Although these are useful measures for determining whether
an inventor deserves an exclusive property right, as presently
applied, these criteria result in discrimination toward
indigenous groups in developing nations.
 1. Novelty
 An important goal of the U.S. Patent Act is to distinguish
claimed inventions from prior inventions to ensure that patents
are only granted for products and processes that are actually
new.
 When deciding whether or not to issue a patent, patent
examiners look to the existence of any prior art references.
 The specific types of prior art references upon which the
Patent and Trademark Office (PTO) relies are listed in 35
U.S.C. � 102.
 In particular, � 102(a) identifies four categories of prior art
references that preclude issuance of a patent: (1) prior
knowledge of the invention by others in the United States; (2)

4.  As � 102(a) demonstrates, prior use or knowledge of an
invention in this country is enough to prevents issuance of a
patent, while the same prior use or knowledge in a foreign
country has no effect on patentability.
 In other words, the use or knowledge of a prior invention, must
be accessible to the public in this country.
 While foreign publications or patents meet this criteria,
unpublished foreign use or knowledge do not. This distinction
has the effect of discriminating against indigenous populations
in foreign countries because their traditional knowledge is rarely
published.
 Furthermore, such a distinction is not useful in the bio-piracy
arena: biopirates who “discover” new species of plants and
animals are able to pass the novelty requirement, even though
indigenous people have often led them to the “new” species and
imparted to them information about its traditional use.

5.  2. Non-Obviousness
 In addition to the novelty requirement, � 103 of the Patent
Act also requires that an invention or discovery be non-
obvious in order to be patentable.
 The non-obviousness requirement prevents any invention
that would have been obvious at the time of invention to a
person with ordinary skill in the particular art.
 As under the novelty requirement, the prior art relied upon
to determine whether an invention is obvious would not
cover prior knowledge or use in a foreign country.
 As a result, the “person with ordinary skill in the particular
art” would not include a member of an indigenous
population in a foreign country. Therefore, the non-
obviousness requirement discriminates against indigenous
persons in the same way as the novelty requirement.

6.  3. Utility
 The third major requirement for patentability is utility.
 The utility requirement is a relatively easy one for a patent
applicant to fulfill.
 In fact, even if an invention is inferior to a prior invention
that serves the same purpose it can still be patented.
 The only kinds of inventions or discoveries that have been
prevented from patentability on the grounds of non-utility
are those for purposes deemed illegal or immoral.
 For example, any invention useful only in committing a
crime or fraud, such as a method of counterfeiting
currency, could be unpatentable for public policy reasons.

7. Plant patenting
 Whoever invents or discovers and asexually
reproduces any distinct and new variety of plant,
including cultivated sports, mutants, hybrids,
and newly found seedlings, other than a tuber
propagated plant or a plant found in an
uncultivated state, may obtain a patent
therefore, subject to the conditions and
requirements of this title.
 The provisions of this title relating to patents for
inventions shall apply to patents for plants,

8.  The grant, which lasts for 20 years from the date of filing
the application, protects the patent owner’s right to exclude
others from asexually reproducing the plant, and from
using, offering for sale, or selling the plant so reproduced,
or any of its parts, throughout the United States, or from
importing the plant so reproduced, or any part thereof, into
the United States.

9. Current U.S. International Patent
Policy
1. TRIPS
Trade-Related Aspects of Intellectual Property Rights
(TRIPS), a result of the Uruguay Round of trade
agreements.
 While fully supporting TRIPS, the United States has failed
to ratify the 1992 Convention on Biological Diversity
(Biodiversity Convention) which, unlike TRIPS, lists the
sharing of benefits arising from the use of traditional
knowledge as a goal.
 In short, the agreement requires that signatory nations
adopt intellectual property legislation that conforms to the

10. STUDY
THE AYAHUASCA CASE

11.  In 1986, Loren Miller, an American scientist and
entrepreneur, obtained a U.S. patent on a strain of the
ayahuasca vine.
 Granting him rights over an alleged variety of B. caapi he
had called "Da Vine". The patent description states that
the "plant was discovered growing in a domestic garden
in the Amazon rainforest of South America." The patentee
claimed that Da Vine represented a new and distinct
variety of B. caapi, primarily because of the flower color.
 Ayahuasca, a vine native to the Amazon Rain Forest,
has been used by healers and religious leaders
throughout the Amazon for generations.
 For hundreds of years, shamans have used ayahuasca
to treat sicknesses, contact spirits, and foresee the
future.

13.  Several years after its issuance, tribal leaders learned of
Miller’s patent.
 They were understandably angry that a foreigner had
patented a plant that they had been using and worshiping
for hundreds of years.
 Voicing his countrymen’s frustration, Antonio
Jacanamijoy, the leader of a council representing more
than 400 indigenous tribes and groups in South America,
stated, “ur ancestors learned the knowledge of this
medicine and we are the owners of this knowledge.”

14. The fight begins
 In 1999, Jacanimijoy’s council applied for and
obtained a rejection of the ayahuasca patent from
the U.S. Patent and Trademark Office.
The controversy over the patent generated
considerable hostility between the United States
and Ecuador and eventually led Ecuador’s
legislature to forgo signing a bilateral
intellectual property rights agreement
with the United States.

15. Decisions
 1999 - patent annulled - VICTORY OF TRIBALPEOPLE
The Coordinating Body of Indigenous Organizations of the
Amazon Basin (COICA) - an umbrella organization
representing over 400 indigenous groups - learned of the
patent in 1994. On their behalf the Center for International
Environmental Law (CIEL) filed a re-examination request
on the patent. CIEL protested that a review of the prior art
revealed that Da Vine was neither new nor distinct. They
argued also that the granting of the patent would be
contrary to the public and morality aspects of the Patent
Act because of the sacred nature of Banisteriopsis
caapi throughout the Amazon region.
Extensive, new information was presented by CIEL, and in
November 1999, the USPTO rejected the patent claim
agreeing that Da Vine was not distinguishable from the

16.  Miller repeatedly tried over the next fourteen months to
convince the PTO to reconsider its decision.
 The American Inventors Protection Act of 1999 expanded
the rights of “third party requesters” such as CIEL, COICA
and the Amazon Alliance to participate in patent
reexamination proceedings. Under the new law, third party
requesters may submit a written response each time a
patent owner files a brief with the PTO. However, that right
applies only to proceedings for patent applications made
after 1999. Because Miller applied for and received his
patent before then, THEY were refused the opportunity
to reply to any of his allegations or arguments,
regardless of their merit.

17. THE CELEBRATION DID NOT
LASTS
In apparent violation of its own procedures,
the PTO allowed Miller to submit new
evidence and arguments, centering on the
differences between his ayahuasca plant and
museum reference plants. In January 2001,
without having heard opposing views,
the PTO reversed its rejection and, in April,
issued a certificate allowing the patent to
stand for the remaining two years of its term.

18. DETAILED
 The results of that exclusion were apparent when the PTO
acquiesced to Miller’s pleadings and issued its January 26,
2001 notice terminating the examination proceeding and
reversing its earlier rejection of the “Da Vine” patent claim.
 3 Miller’s legal strategy had two points:
 (1) convince the PTO that the flower color descriptions in
the “prior art” herbarium specimens obtained from major
U.S. museums were unreliable and
 (2) persuade the PTO to shift its focus from “Da Vine’s”
flower color to the relative size and shape of its leaves. In
the absence of any input from other party, the strategy
worked.

19. Irony
 Ironically, after all his legal efforts, Miller was left with a
patent that was virtually valueless. The patent he
received protected only the specific genome of the
patented plant and its asexually reproduced progeny —
that is, exclusive rights over nothing more than his original
plant and specimens grown from its cuttings.
 It did not give him rights over any other specimens of
the ayahuasca vine, even specimens that might be
identical in appearance.
 Under the law, a patent applied for before 1995 expires
seventeen years from the date it was originally issued.
The ayahuasca patent expired on June 17, 2003. It

20. Thank you