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Dagim T., for Addis Standard

Addis Abeba, February 07/2019 – On May 19, 2018, the Ethiopian government gave its Attorney General the green light to initiate an international arbitration proceeding against a company holding a series of European patents directed at the grain teff. And on November 21, 2018, a court in The Hague invalidated two of the company’s Dutch patents. For most observers, the news that some obscure company with little connection to Ethiopia, the home of teff, has patented the naturally occurring grain, and as such possesses the legal rights to exclude others from making, using, selling or importing the grain, its flour and any food product made from it, may seem entirely odd. For most Ethiopians, who have cultivated the grain and consumed it as the staple diet injera for millennia, however, the patenting is nothing short of daylight robbery, an act of cultural appropriation made even more objectionable by the whiff of colonial effluvium emanating from the European (Dutch) citizenship of the patentee, Health and Performance Food International B.V. (HPFI). In view of this, it may come as a surprise to many that Ethiopia shares at least some of the blame for HPFI’s patenting of teff, as HPFI was motivated to do so by its mid-2000s agreement with the Ethiopian government to commercialize teff in the western world as a gluten-free food product.

Now that the government is finally moving to address the issue, this article aims to provide some clarity on how the patents were obtained, the scope of the intellectual property (IP) coverage they provide, the invalidation of the Dutch patents and the legal recourse available for the Ethiopian state to invalidate the rest of the patents.

The first patent application was filed in the Netherlands on July 22, 2003 by Soil and Crop Improvements Company (S&CI), a predecessor of HPFI, based on a Memorandum of Understanding (MoU) signed with Ethiopian Agricultural Research Organization (EARO) acting as a representative of the Ethiopian government. The MoU allowed 1,440 kg of teff seeds, 12 teff varieties each weighing 120kg, to be shipped from Ethiopia to the Netherlands for research and development (R&D) purposes. Unfortunately, and rather negligently on the part of the Ethiopian government, the MoU had no provisions covering any Intelectual property (IP) rights that were likely to arise during the R&D efforts.[1] This opened the door for S&CI and HPFI to assert ownership on all the IP rights that flowed from the R&D, which they did by filing patent applications with broad patent claims, first, as noted above, in the Netherlands, and then internationally, which included the United States, Japan and Europe at large (continent wide European patents, once granted, have to be “validated” in individual European member countries to be effective in those countries). The United States and Japanese applications were abandoned as the patent offices in those countries did not deem the inventions to be patentable. The Dutch and European applications, however, were granted early on, the latter becoming validated (i.e., effective) in Great Britain, Italy, Germany, Belgium, Austria, Turkey, France and Spain. The patents in the last three countries were eventually abandoned for failure to pay patent maintenance fees, leaving the patents in the other six countries alive.[2]

When the patent applications were initially filed in the Netherlands and internationally, the patent office handling the applications, the European Patent Office (EPO), rejected both applications, citing several previously published references that the EPO believed to have already discussed what the patent applications were claiming to be new and inventive.[3] i.e., the subject matter that the patent inventor claimed to be his own invention was flour made from teff that supposedly had a larger so-called falling number at the moment of grinding (compared to at the time of harvesting)[4]. In particular, the international patent application specified falling numbers of at least 250. So now you may ask yourself, what exactly is a falling number and why would identifying teff that has a large falling number (such as 250 or higher) be considered novel and inventive as of July 22, 2003.

A falling number, simply stated, is a numerical value that characterizes the quality of a grain or flour for the purposes of producing leavened baked product such as bread.[5] According to the inventor[6], prior to his invention, no one had managed to produce “a stable, gluten-free product with an attractive taste and structure” by using teff grains. The inventor, Dr. Jans Roosjen, seems to distinguish injera from a “stable, gluten-free product” by arguing that “injera is usually made from a flour mixture consisting of equal parts of teff flour and wheat flour” (as such, the argument goes, injera cannot be a gluten-free product due to the presence of wheat flour). Previous attempts to produce “a food product with traditional teff flour … [was found to] often [cause] problems. A known problem is the instability of the product, particularly of baked products. In other cases, the product has an unattractive taste and/or structure.” The solution for such problems when producing baked products was then said to be to use teff with a falling number of at least 250 at the time of grinding. This “insight” was the basis for the inventor’s claim of novelty and/or inventiveness in support of his application for a patent, which, as mentioned above, was accepted by the EPO.

Source: Harry Kloman (University of Pittsburgh)

Let’s unpack this a little bit. Initially, the assertion that injera is made from a mix of teff and wheat flours is as accurate as the belief that Chipotle Mexican Grill serves authentic Mexican cuisine. It is true that injera served outside of Ethiopia may contain wheat flour in it, but that is usually the result of cost cutting measures that are universally despised by Ethiopian patrons and necessitated by the expense of importing teff from Ethiopia. It seems rather curious that the inventor didn’t seem to be aware of this fact, as he was an expert in the field and likely had intimate knowledge about teff and its use in Ethiopia. Further, and more critically, the patent application’s observation that the use of teff with high falling number results in stable or suitable baked products is neither as novel nor as inventive as it may seem on first blush.

The higher the falling number of a grain is the higher the quality of baked products that are made from its flour. One method of increasing the falling number is to store the grain for a period of time, since “it is generally known that grain goes through an after-ripening process after harvesting, in which the falling number of the grain increases.”[7] The inventor proposed storing teff at least for several weeks so that at the time of grinding its falling number is at least 250. This concept, or rather teff flour incorporating this concept and products made therefrom, are essentially what the inventor considered to be his novel and/or inventive invention, and for which he received patent protection from the EPO covering the several countries in Europe identified above.

Increasing the quality of teff by storing it after harvesting, however, is nothing new (even by July 2003 when the first patent application was filed), as any teff farmer in Ethiopia can attest. In Ethiopia, farmers usually store a given season’s harvest for sale and/or consumption during the coming season, as it is common knowledge in the country that when possible, teff should be stored after harvesting to improve its quality. As such, what the inventor claimed, and for which he received patent protection, was neither novel nor inventive, as it has been known and practiced in Ethiopia for millennia. Granted, all that knowledge may not have been documented, which is what patent examiners usually depend on when considering a patent application. All the same, it seems highly unlikely the EPO would have granted the patent if they had this information on file when reviewing the patent application. The EPO had in fact rejected the application initially, but relented only when the patent applicant argued that the minimum falling number of 250 was a “clearly novel and inventive” feature in view of what was known at the time,[8] which, as we just saw was not the case.[9]

This view rejecting the patent application’s claim of novelty and inventiveness was endorsed by both the U.S. and Japanese patent offices. The patent application was filed in both countries, but both refused to grant patents, taking the position that in view of what was known at the time, the inventor’s claim of novelty and/or inventiveness with respect to teff having a falling number of at least 250 was obvious. The applicant abandoned the Japanese application rather quickly, but persisted in the prosecution of the U.S. application, no doubt owing to the rather large and lucrative market that is present for gluten-free products in the U.S. Failing to convince the U.S. patent office on the novelty or inventiveness of the claims, the patent applicant abandoned their U.S. efforts in 2013, undoubtedly to the relief of the largest Ethiopian population residing outside of Ethiopia itself. With the abandonment of the U.S. application, and the invalidation of the Dutch patents as noted above and discussed below, patents are currently pending in only five European countries, Great Britain, Italy, Germany, Belgium and Austria.

Teff Muffins (Source: Alissa Segersten at Nourishing Meals)

So then, what exactly do these patents cover and what are their effects in their respective countries? The extent of the patents’ protection, i.e., the monopoly power given to the owner of the patents, is defined by what are known in patent jargon as the claims, one of the main ones of which is the following:[10]

A flour of a grain belonging to the genus Eragrostis, preferably Eragrostis tef, characterized in that the falling number of the grain at the moment of grinding is at least 250, preferably at least 300, more preferably at least 340, most preferably at least 380.

Other claims claim food products that are made of teff flour as claimed above. And yet other claims claim methods of preparing food products using the flour as well as any use of the flour in general. These claims bestow the patent owner monopoly rights, i.e., legal rights in the above countries to exclude others from making, using, selling or importing the flour and food product made from the flour. In other words, for example, if an Ethiopian company wishes to produce bread made exclusively of teff flour that has a falling number of at least 250 (i.e., teff that has been stored for several weeks) for export into the countries listed above, then the patent owner can legally sue the company for patent infringement, and further block their importation into the countries (or entirely block the company from producing the product if the company is based in one of those countries).

In view of the foregoing, readers may wonder what can be done to address the issue. In other words, circling back to the beginning of this article, what can the Ethiopian Attorney General do about these European patents? Some, with little appreciation of how foreign patent systems work, have suggested reaching out to the Dutch government for help in canceling the patents or reclaiming them for the Ethiopian state, and no surprise those efforts have been futile. In most jurisdictions, a patent is viewed as a private property, and as such a government is not at liberty to confiscate one’s patents for mere political reasons.

In Europe, there are two main avenues for challenging a granted patent. As mentioned above, a European patent that is granted at the continent level by the EPO is later validated in the individual member states of the EPO. A granted patent can be challenged at the EPO level before it is validated by, and becomes effective in, the member states, but that has to be done within nine months of the announcement of the grant. All but the Dutch patent were announced in October of 2007, so that avenue was closed a long time ago. [11] The second avenue, likely the only legal option left at this point more than a decade after the grant of the patents, is to challenge the patents as invalid in the national courts of the respective countries. And this option is exactly what a baking company used to have the Dutch patents invalidated on November 21, 2018, as mentioned above.

This Dutch baking company, called Bakels, argued in court that the Dutch patents should be invalidated because, wait for it, the patents were neither novel nor non-obvious. The court agreed and invalidated all the claims in the patents. The reasons are technical and somehow convoluted so we won’t explore them here, but the ruling can be seen as a sign that the patents, which should not have been granted in the first place at least for the reasons discussed above, are susceptible to legal challenges and might fall if attacked not only in the Netherlands, but also in the other five countries. Being a national court, the court’s jurisdiction extends only over the Netherlands, and as such, the patents in Great Britain, Italy, Germany, Belgium and Austria are legally unaffected by this decision.

So the question now becomes, given the foregoing, and in particular the invalidation of the Dutch patents as a result of a legal challenge, should Ethiopia also follow the same route and attack the patents in the courts of these other European countries? Although that would be satisfying from a national pride point of view, practically speaking, launching litigations to invalidate the patents may be a costly, cumbersome and ultimately fruitless exercise. For context, the litigation to invalidate the Dutch patents lasted about four years and cost more than 130 thousand Euros. That means, the other European patents, all with an expiration date of July 22, 2024, may expire even before the court cases are resolved, after thousands of Euros are spent on legal fees. Only an urgent and compelling reason would justify such an investment, and one presumes it would be up to the Attorney General to decide if there is one.

However way the country chooses to proceed, it goes without saying that the patenting of teff is a teachable moment for the relevant authorities in Ethiopia, in that in today’s globalized world, their focus needs to expand beyond the country’s borders in terms of safeguarding the country’s cultural, historical and intellectual heritage. In particular, those government agencies that frequently engage with foreign interests where foreign or international laws play a role, may need to be mindful about employing competent legal representations in their dealings, as the cost of not having one is usually much higher, especially in the long run, compared to any savings that may be realized by avoiding the hiring of such personnel. As the saying goes, cheap is in fact expensive. AS

End-note:

[1] The aforementioned report and Sec. 4.1 of Drafting Successful Access and Benefit-sharing Contracts by T. R. Young and M. W. Tvedt discuss the many shortcomings of the executed agreements that have rendered the Ethiopian government unable to enforce the terms of the agreements. For example, by declaring bankruptcy, the company that signed the agreements essentially relieved itself off of all its obligations under the agreements, while its assets including the seeds were transferred to a new company, placing them beyond the legal reach of the Ethiopian government.

[2]The Dutch patents are patent numbers NL 1023977 and NL 1023978, while the European patent number is EP 1646287.

[3] Such rejections are common as patent offices rarely grant a patent on a first attempt.

[4] In this article, we focus on NL 1023977, which is directed to teff flour only. NL 1023978 focuses on mixes of teff flour and other gluten free flours made from quinoa, corn, etc.

[5] The term “falling number” comes from the process by which the quality of the flour is measured, which involves the falling of an instrument through a paste made of the flour, hence “falling number”.

[6]European Patent No.: EP 1646287.

[7]Id., para. [0015].

[8]Patent Applicants’ response to the Written Opinion issued by the European Patent Office on Nov. 19, 2005 with respect to Patent Application no. PCT/NL2004/000524.

[9]The more fundamental question of whether a patent claiming a naturally occurring grain such as teff should have been granted in the first place, whether the invention included features that were novel or inventive, is a lot more interesting but beyond the scope of this article.

[10]The Dutch claim is slightly different, but the distinction is not important for our discussion here.

[11] The reason for the Dutch patent being an exception is rather technical and not relevant to our discussion here.

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