How Did India Win in the Legal Battle Against Biopiracy Regarding Basmati Hybrid Rice Variety Patented by the USPTO and Valuable Lesson for Vietnam

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Biopiracy or bioprospecting can be understood as the appropriation of traditional knowledge (TK), biodiversity and genetic resources in developing countries to claim for patent and to exploit it for profit without authorization and compensation. Fight against biopiracy is an arduous, complex and costly legal battle. However, in this below article Vietnam can learn much from the experience and commendable efforts of India in the fight against the United States plant patent no. 5,663,484 accused of biopiracy of its world-renowned Basmati traditional rice variety.[1]  

United States Granted Patent for Basmati Hybrid Rice Variety

Basmati rice, a unique long grain fragrant rice is created from 29 varieties of Basmati rice, namely Basmati 217, Basmati 370, Type 3 (Dehraduni Basmati) Punjab Basmati 1 (Bauni Basmati). Basmati is cultivated in the foothills of the Himalayas in India and Pakistan for many centuries. In India alone, Basmati is grown in the states of J&K, Himanchal Pradesh, Punjab, Haryana, Delhi, uttarakhand and western Uttar Pradesh.[2]

Unlike regular white rice with a glycemic index (GI) of 89, the GI of both white and brown Basmati rice ranges from 45-58, which is deemed suitable for diabetics. Basmati rice is a food recommended by the Canadian Diabetes Association.[3]

According to Statista, India currently accounts for 80% of the global Basmati rice export market share. With 15.5 million tons of rice exported in 2020, India is holding position number one in exporting Basmati rice and non-Basmati rice. In 2020, the export turnover of Basmati rice and non-Basmati rice of India was 6.3 billion USD, of which Basmati rice alone contributes 70% of the value with export turnover of 4.33 billion USD.[4]

On September 2, 1997, the USPTO granted patent no. 5,663,484 (“Patent '484) titled “Basmati rice lines and grains” for the hybrid rice crop under the name of Ricetec Inc., an American company based in Texas.

Cover page of Patent ‘484 published

by the USPTO before being opposed by India

Why Did India Protest Against Patent ‘484?

Patent '484 entitled "Basmati rice lines and grains" refers to a novel rice lines, planting them as well as grains of these lines and method for breeding these lines. Patent '484 also proposes novel means for determining the cooking and starch properties of rice grains and its use in identifying desirable rice lines. Patent '484 has 20 claims, in which claims 15-17 are considered the most important ones because Ricetec has the exclusive rights over unique properties and/or traits which inherently have in Basmati rice crops currently being grown solely in India and Pakistan.

Patented claim 15 relates to a rice grain which has such 6 properties as (i) a starch index of about 27 to about 35; (ii) a 2-acetyl-1-pyrroline content of about 150 ppb đến khoảng 2.000 ppb; (iii) a length of about 6.22mm to about 8.00mm, a width of about 1.6 mm to about 1.9 mm, and a length to width ratio of about 3.5 to about 4.5; (iv) a whole grain index of about 41 to about 63; (v) a chalk index of less than about 20. Claim 16 referring to claim 15, further claimed that a 2-acetyl-1-pyrroline content of about 350 ppb to about 600 ppb. And claim 17 describing rice grains of claim 15 has a burst index of about 4 to about 1

While all WTO members exclude plant variety protection from patentability, only the United States accepts plant variety protection in the form of patent. Specifically, under US law, breeders of new plant varieties can choose one of three legal forms (independently and not mutually exclusive) to gain exclusive rights to plant varieties: (1) utility patent, (2) plant patent, and (3) plant variety protection certificate (PVP) based on the UPOV Convention, provided that the plant variety satisfies the conditions for patentability of 3 those forms respectively. By choosing the second form of protection, Ricetec became a US patentee conferred upon the exclusive right to control the production and import of Basmati rice in the US market, and it also forces farmers to pay royalties to plant rice, and they are not allowed to sow seeds for the next crop without authorization.

India feared that Basmati rice and rice variety pursuant to Patent ‘384, which has similar characteristics to Basmati rice which has been cultivated for centuries in India and Pakistan, will cause extremely serious damage to Indian farmers’ exports to the US market.

Key legal issue regarding Patent '484 was whether Basmati is a common name (generic term) or a name specifically derived from the fragrant rice variety grown in India and other South Asian countries? Is the rice lines generated by Ricetec really novel? Is Ricetec conducting biopiracy or bioprospecting against the traditional knowledge belonging to the indigenous South Asian communities? 

Not only the Government of India but also many international non-profit NGOs such as the ActionAid strongly opposes Patent '484. India empirically prepared evidences up to 50,000 pages of documents and submitted them to the USPTO proving that the traditional knowledge and biodiversity associated with Basmati – an indigenous rice variety cultivated for centuries by Indian farmers.

Under the pressure of protest campaign against Patent '484 in the 3-year legal battle between the Governments of India and the United States, the USPTO finally accepted the petition for re-examination of Patent '484. As a result, Ricetec agreed to withdraw 15 out of 20 patented claims and also agreed to change the title of invention, ie. no longer using the term Basmati. Upon the reexamination, the USPTO ultimately concluded that 15 claims 1-7, 10, 14-20 are annulled, claims 12-13 are forcibly revised. Kindly note that three most important claims 15-17 (among the 15 claims rescinded/forced to amend) were invalidated along with the name of Patent ‘484 no longer containing the word Basmati. (Newly revised title of Patent ‘484 is “Rice lines Bas 867, RT1117 and RT112”). With these significant outcomes, the Government of India officially declared that it won in the Basmati rice biopiracy case.

Reexamination of Patent ‘484 published by

the USPTO after being protested by India

Is It Possible to Make the Renowned Rice Brand ST25 Become a National Brand of Vietnam?

In the fight against impersonation of its world-renowned Thai Hom Mali rice, especially in the US market, the Thai Government succeeded in obtaining the US certification trademark no. 2,816,123 in 2004 for the fragrant rice Thai Hom Mali (made from the traditional rice variety with the same name) originated in Thailand. Accordingly, the Thai Government has achieved all three objectives: (a) making Thai Hom Mali rice become its national brand name; (b) promptly preventing the brand name Thai Hom Mali rice from being genericized (different from an applied-for certification trademark Basmati rice multiple rejected by the USPTO due to genericness and now India’s appeal against refusal in progress); and (c) effectively securing Thai Hom Mali rice brand name from being impersonated or counterfeited.[5] So why can't Vietnam think of turning the reputable brand name ST25 that was awarded the world’s best rice in 2019 to acquire all three goals like Thailand?

Thai Hom Mali rice registered as a U.S. Certification Trademark

Bross & Partners, a Vietnam intellectual property law firm ranked Tier 1 in 2021 by Legal 500 Asia Pacific, has experience and capacity to resolve intellectual property rights complex disputes regarding trademark, copyright, patent, plant variety and domain name in Vietnam and abroad.

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