Lessons for Kenya in tomato patent war

By Pravin Bowry

Kenya: For over a century courts have been embroiled in legal battles relating to the humble tomato. And even today there are cases between nations and multi-nationals quibbling over this crop which some have termed ‘the evil tomato’.

In the 1893, the American case of Nix vs. Hidden, the US Supreme Court in an action to recover duties paid under protest on tomatoes imported from the West Indies posed a single question: Were tomatoes classified as ‘vegetables’ or ‘fruits’ within the meaning of the Tariff Act of 1883?

The court acknowledged that scientifically the tomato was a fruit just like cucumbers, squashes, beans and peas but in the common parlance of people all these are considered as vegetables. The court in the attempt to classify tomatoes as fruits tilted to the view held in a similar attempt to classify beans as seeds: Beans, in scientific language, are classified as such but not in commerce and common parlance.

Culinary definitions

It was held that there being no evidence that the words ‘fruit’ and ‘ vegetable’ had acquired any special meaning in trade or commerce different from that given in the dictionaries then the ordinary meaning would apply. Nothing indicated that tomatoes were ‘fruit’ as distinguished from ‘vegetables’ as they were ordinarily referred to.

The Supreme Court held that the tomato was a vegetable for purposes of the Act, a classification that stands to date. It matters not if the scientists consider tomato as a fruit of the tomato vine with a soft part which supports seeds. Indeed, cooking maestros also have culinary definitions distinct from the scientific and legal ones.

Pending cases

There have been other court cases relating to other vegetables but centered on tariff and tax matters. The famous case, involving multimillion dollar tax implications, on whether ‘Pringle’ crisps were indeed potato crisps comes to the fore. The court held that Pringles had enough ‘potatoness’ to be classed as crisps.

There is also a similar pending patent related case touching on broccoli in the same court. The decision undoubtedly will have ramifications for other crops.

Fast track now to the 21st century and the tomato warfare is creating ripples amongst patent lawyers, biologists and investors. The forum where the war is taking place is the European Patent Commission in a patent granted in 2003. Israeli inventor Arthur Schaffer invented a method of producing a type of tomato with reduced water content.

The State of Israel then patented the method. The claim included an independent claim relating to a method for breeding tomato plants, as well as independent claims relating to tomato fruit. This was followed by opposition to the patent by Uniliver N.V. The ground for opposition by Uniliver N.V. was that the patent went against the laws on the non-patentability of plants.

The Technical Board of Appeal of the European Patent Commission referred the tomato patent case to the Enlarged Board of Appeal.

Some of the legal issues raised are, whether a plant obtained with an essentially biological process, can be  patented and secondly, whether a patent can be granted on a method to produce plants or plant material if it is the only available method at the time of filing the patent application.

Manipulation

In European jurisdictions the legal protection of biotechnological inventions prohibits the patenting of seeds, plants and a selection of animals, except where genetic manipulation is involved. Regardless of this the commission has authorized patents for certain varieties of plants and seeds bred by conventional techniques holding that the introduction of biological markers introduces technological innovation.

The decision on the tomato case may well have a great significance in Kenya which boasts of hundreds of indigenous medicinal plants.

The law in Kenya as provided for in the Industrial Property Act of Kenya (Cap 3 of 2001), is similar to that in the European jurisdiction. Plant varieties provided for in the Seeds and Plants Varieties Act of Kenya (Cap 326), are not parts or products of biotechnological processes and are not therefore patentable.

The Kenya Industrial Property Institute is yet to receive an application to patent such things as a type of tomato, or even the method by which it is produced.

Perhaps the ongoing legal battles in the international field of intellectual property should serve as a wakeup call for Kenyans to protect their inventions before they are taken up and exploited by others as in the case of the kiondo, kikoy and Maasai shoe technology.

In Kenya the Agriculture (Declaration of Special Crops) (Horticultural Crops) Order under the Agriculture Act (Cap 318) lists tomatoes as vegetables. Further in the Food Drugs and Chemical Substances Act of Kenya (Cap 254) tomatoes are dealt with under part 13 which relates to fruits, vegetables and their products. It provides for the required standards of canned tomatoes, tomato paste, concentrated tomato paste, tomato pulp and tomato catsup.

Culinary experts, farmers and gardeners all cherish tomatoes and now even lawyers and scientists are getting the taste. Whether in the form of fruit, vegetable, soup, juice, paste, puree, pulp or whatever else.

The writer is a lawyer.

[email protected]