Safeguarding Rights on Herbal Formulations 593

isnovel and which in turn leads to

grant of wrong
patents. Medical Center to whom the patent was assigned by
the inventors, decided not to pursue the patent and
transferred the rights of the patent to the inventors.
Biopiracy: Turmeric Case The inventors decided to pursue the patent on their
A glaring
example of biopiracy of the
therapeutic
own and filed a response to first Office Action issued
usage of Indian herbal formulation was the by USPTO. In their response, the inventors stated
No. 5,401504 patent that in the known art, turmeric powder was locally
granted by USPTO on "Use of Turmeric
in wound
healing." The patent was granted on March applied to a wound in the form of a paste and not in
28, 1995 which generated the form of a powder as such as claimed in
turmeric
wide-spread public
resentment in India as Turmeric (Haldi) is used in their invention. They argued that the powder and
almost every Indian household. The invention was the paste had different physical properties, i.e. bio-
availability and absorbability and therefore, a person
made by two US based Indians Suman K Das and
Hari Har P. of ordinary skill in the art would not expect, with
Cohly
and was originally assigned by reasonable degree of certainty that a powdered
the inventors in favour of University of
Mississippi material would be useful in the same application
as
Medical Center, USA. The patent had six claims inventors further
paste of the same material. The
relatingto administration of an effective amount of argued that in the known art, the
oral administration
turmeric powder through local and oral route to was known with the
only and honey itself has
honey
enhancethe wound healing process.
wound healing properties.
Government of India decided to take up the matter Examiner at the
I n the second Office Action, the
with USPTO for revocation of the atoresaid patent sPTO reiected all the claims once again and made
through the route of filing 'Request for Re- it clear that paste and the powder forms were
examination.' CSIR could locate 32 references which The inventors had
"equivalent" for healing wounds.
were in different languages Sanskrit, Urdu and Hindi
later an interview with the concerned Examiner at
a n d some of which were more than hundred years
USPTO and deleted two claims (claims 5 and 6) and
old. These references established beyond doubt that restricted the invention to a "non-healing surgical
the finding claimed in the aforesaid US patent was wound" stating that there was no prior art which
well known in India much before the date of filing of suggested using turmeric in surgically inflicted non-
can
the aforesaid patent. Under US laws, any person
healing wounds and requested the Examiner to allow
file a request for re-examination of a granted patent, the patent with the amended claims. On November
the
period of enforceability of a
atany timeduring 20, 1997, the Examiner, USPTO rejected the amended
filed
patent. Such 'Request Re-examination' can be
for claims also as being anticipated and obvious. The re-
of patentabilty is
when a substantive new question examination certificate was issued on April 21, 1998,
before USPTO for re-examination. The the aforesaid patent on
presented proceedings were closed and
anticipation of a granted patent by prior
art turmeric was revoked. This was the first case of a
for
documents constitutes one such firm ground USPTO which successfully
patent granted by was

raising question
the of patentability of a patent challenged by a developing country.
USPTO. Accordingly, formal request for
granted by
re-examination of the aforesaid patent was filed by Biopiracy: Neem Casse
1996.
CSIR at USPTO on October 28,
India Anotherexample of biopiracy of the Indian traditional
Considering the references presented by
which anticipated the invention, USPTO,
in their first knowledge was the grant of patent No. EP 0,436,257
neem oil- a novel
all on "Hydrophobic extracted
Office Action issued on March 28, 1997, rejected insecticide and fungicide" by European Patent Office
issue of the first
the six claims of the patent. After 14, 1994. The patent takern
of Mississippi (EPO) on September was
Office Action by USPTO, University