Info Service on Biodiversity and Traditional Knowledge (July12/05)
Rutgers University chases profit from West African medicinal plants
By Edward Hammond
In 2006, the biopiracy report Out of Africa: Mysteries of Access and Benefit Sharing highlighted the effort of Rutgers University (New Jersey, United States) to patent and profit from kombo butter. An extract of the African nutmeg tree (Pycnanthus angolensis), kombo butter has a wide variety of traditional medicinal uses in Central and West Africa.
Seven years later, in 2012, the Rutgers team is still headed by the same professor, James Simon, and is still trying to convert its work in West Africa, funded by the US Agency for International Development (USAID), into profits for the New Jersey school.
Simon and his Rutgers colleagues have recently lodged a new claim over kombo butter extracts as pharmaceuticals, and have another new patent application on extracts from a second African plant. That plant, kinkéliba (Combretum micranthum), is a West African shrub grown for its tealeaf. It also has a number of known medicinal properties.
Rutgers, a public university, has developed a benefit sharing policy for these claims. It did not make its benefit sharing policy public, however, until a request was made to it under freedom of information laws. First discussed here, Rutgers’ benefit sharing policy is an embarrassment to the institution. The policy is so poorly conceptualized and crafted that it is highly unlikely to be successful, and falls short of any reasonable interpretation of compliance with the Convention on Biological Diversity or its Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits.
New Claims on Kombo Butter
To update the original story from 2006, according to records acquired under the New Jersey open records law, Rutgers initially licensed its interest in the kombo butter claim to BioResources International, a small and elusive company that specializes in providing African plant products to companies and other foreign requesters. BioResources lists its headquarters as being in Ghana or at various addresses in the US, including private residences located near Rutgers University.
BioResources’ original effort to commercialize kombo butter appears to have been unsuccessful. In January 2011, however, Rutgers asked the company to sell back to the University a four-year option on the 2008 patent, which claims anti-inflammatory uses of kombo butter, and was profiled in Out of Africa.
Rutgers’ move to reacquire rights to the 2008 patent may relate to a new patent application it has filed on kombo butter, this time for use of several plant extracts as “neuroprotective agents”, meaning to treat diseases such as Parkinson's and Alzheimer's, as well as for administration to patients who have suffered a stroke (and have consequent nervous system damage). This new kombo butter claim was published by the US Patent Office in May 2012, and is pending there. International claims are also before the Patent Cooperation Treaty (PCT) and European Patent Office.
Medicinal Use of Kinkéliba: Rutgers’ Latest Dubious “Invention” from West Africa
Rutgers’ other new African plant patent claim is on the kinkéliba bush. Kinkéliba, or Combretum micranthum, is a familiar plant in dry regions of West Africa and the Sahel, where it is harvested for use as tea and for medicine. The plant is widely known in West Africa. Through international commerce for a century or longer, it is also somewhat familiar in other regions. Within Africa, kinkéliba is highly regarded and used for a variety of purposes, including tealeaf, and medicinal uses ranging from treating fevers to weight loss.
Rutgers, in its patent application WO2011140066, claims that it has discovered several chemicals isolated from kinkéliba leaves. The patent application claims these compounds as matter, claims methods for their extraction, and claims their use to treat diabetes (and related glycemic disorders). The latter uses, Rutgers alleges, are its own discovery.
Rutgers’ patent application and related scientific publications concede that kinkéliba has wide use in traditional medicine in Africa, but these discussions do not mention traditional use for the treatment of diabetes. It is a very curious omission, because a brief internet search reveals several reports that predate the Rutgers patent application and which indicate that kinkéliba is in fact traditionally used to treat diabetes.
For instance, in 2006, an African study on use of traditional remedies for diabetes was published in Diabetes & Metabolism. The Guinean researchers surveyed 397 diabetes patients at Conakry University Hospital, of whom 131 (33%) said they used traditional treatments. Asked to identify the plants they used, they collectively identified 31 species. Of these, kinkéliba was the third most frequently cited plant, used by 19% of the respondents. This indicates that use of kinkéliba in Guinea to treat diabetes not only exists, but is also commonly known.
In light of the readily available information indicating that kinkéliba is used traditionally to treat diabetes, Rutgers’ failure to mention this fact in its publications and patent application is difficult to explain as anything other than a self-serving deception. After all, the Rutgers team purports to be expert in African medicinal plants, and the entire PhD dissertation of a student of James Simon is focused on medicinal use of the kinkéliba.
Some of the evidence of traditional use of kinkéliba was reported in the international patent search report on the Rutgers application, including the Guinean paper, although the questions the PCT search report raises about the patent application primarily center on other issues (publication of the PhD dissertation before filing of the patent application).
The patent application is in its relatively early stages, however, and it is too soon to predict a result. Rutgers may modify its claims, or file a follow-on application, as it has with kombo butter. But no matter how Rutgers modifies its claims, it is quite clear that Rutgers has not invented the use of kinkéliba to treat diabetes.
Under a formal open records request, Rutgers was asked to produce the benefit sharing agreements and material transfer agreements (MTAs) that the University has executed with African partners for plant samples it has obtained, including kinkéliba.
The University could not locate any MTAs for the materials it possesses and has patented, and the only “agreement” it could find was an odd four-page paper titled "Agreement on Benefit Sharing Policy Related to African and International Inventions", which the University describes as a “departmental policy”. Although the University calls this document an “agreement”, it could not produce any signed or countersigned copies, indicating that it had actually been put into effect.
While the policy/agreement’s preamble says that the University is committed to benefit sharing, what follows is a convoluted mess of language that lacks intellectual rigor. Indeed, the policy/agreement does not appear to have been given much serious thought at all. The following paragraphs attempt to describe it, although the document is so illogically constructed that it is difficult to do so clearly:
Among its most basic problems, Rutgers has drawn up its benefit sharing structure independently, with a “one agreement fits all approach” whose basics appear to have been unilaterally decided by Rutgers. These circumstances make prior informed consent and mutually agreed terms difficult, perhaps impossible, to achieve.
Rutgers’ policy/agreement dismisses the issue of traditional knowledge with a farcical claim. The University says that whatever intellectual property it claims is “distinct from validating traditional uses and applications of medicinal plants which would overlap with Traditional Knowledge (TK) related issues.” Traditional knowledge is thus dismissed from any role in the remainder of the so-called benefit sharing agreement, because by Rutgers own determination, anything that it seeks to patent does not involve traditional knowledge.
The example of traditional use of kinkéliba to treat diabetes clearly shows that Rutgers’ distinction between its patent claims and traditional knowledge is false, nevertheless, Rutgers’ policy/agreement simply snuffs out traditional knowledge with the unqualified assertion that any of Rutgers’ claims don’t “overlap” with such knowledge.
In the agreement/policy, the University does not actually make any commitment for benefit sharing – even in its own benefit-sharing plan. Rutgers asks the companies that license its African patents to share benefits but not the University itself. Thus, none of Rutgers’ patent income goes to benefit sharing. Instead, the commercializing company is asked to make payments directly to entities in the country of origin. (An odd structure considering that the licensee may have no familiarity with the country of origin, much less the skills necessary to work effectively with entities there. In addition this unilateral one size-fits-all approach ignores the fact that in most national laws there cannot be any transfer of rights even if Rutgers legitimately accessed the genetic resource or traditional knowledge in the first instance.)
But benefit sharing by the licensing company is not even mandatory. The applicability of the provision to share benefits in this convoluted policy/agreement boils down to:
“[Rutgers] requests that the private sector company must be committed to adhering to a benefit sharing policy based on the commercialization of a patent, invention, or discovery.”
Rutgers “requests” that the company “must be committed” to “a benefit sharing policy” (what policy?) … in a document that is a university “departmental policy” but whose title declares that it is an “agreement”? The verbiage is obviously meaningless.
The benefit sharing substance of Rutgers’ document comes in its final three paragraphs. These items Rutgers would take effect through the University’s request that they be inserted into a licensing agreement signed by the company.
In the first of these convoluted paragraphs the University and private company say they “believe in sustainable development” (a statement with no practical effect) and “promise” to develop a benefit-sharing plan. These are essentially recitations, and no concrete commitments are made.
Then, terms of the plan to be developed under the first paragraph are somewhat contradictorily specified in the second, which states (sloppily): “5% or 10% of all sales/profits generated as a result of this invention” will be provided to (1) an NGO in the source country involved in medicinal plants, (2) “communities involved” in collection and processing of the plant product, and (3) a “leading institution of higher education” in the source country, which must use the funds to further the plant export industry.
Rutgers’ commercial relationship with the company – e.g. the royalties and other payments the University receives – is defined separately, and none of its terms are part of the benefit sharing agreement/policy.
The third and final paragraph of Rutgers alleged benefit sharing agreement is intended to make sure that nobody in the outside would ever get to the bottom of Rutgers’ laughable approach to benefit sharing, even in the unlikely event that its policy/contract actually took effect. This paragraph reads, in its entirety (punctuated as in the original):
“Both parties agree not to publish the above agreement on Benefit Sharing but to provide a highlight declaring and showing to the public that a benefit sharing policy is in place. [This last statement has been requested by the private sector].”
Thus Rutgers has a secret “agreement” to publish a “highlight” of a “benefit sharing policy” which is so poorly thought out and written that it can never practically function. Yet this convoluted arrangement to “provide a highlight” without releasing the actual agreement terms could be used to create the false impression that benefit sharing is taking place, without permitting the actual terms to be examined.
From its title to its conclusion, Rutgers’ agreement/policy is ill conceived and unworkable. But the University continues to lodge new patent claims. The numerous inconsistencies of Rutgers’ policy plainly show that little thought or expertise went into its creation, suggesting cynicism about benefit sharing. The structure of its policy/agreement ensures that even if an attempt to implement it was made, that its failure wouldn’t be apparent.
The only thing that is sure is that the agreement/policy enables Rutgers and its business partners to claim that benefit sharing arrangements have been made, even if they are not implemented and unworkable to begin with. And perhaps that’s just what Rutgers, its USAID funder, and its business partners want: To be able to say that benefit sharing is being taken seriously, even if in reality it is not.
Meanwhile, Rutgers continues to file more patent applications on African medicinal plants, hoping to finally achieve patent control over breakthrough product.
 McGown, J 2006. Out Of Africa: Mysteries of Access and Benefit Sharing. Edmonds Institute/African Centre for Biosafety. URL: http://www.acbio.org.za/images/stories/dmdocuments/ACB_Out_of_Africa-Mysteries_of_access_and_benefit_sharing.pdf
 Rutgers University 2012. Response to OPRA Requests 1272, 1275, 1288, 1292.
 Slater J 2007. To Make Lemons Into Lemonade, Try ‘Miracle Fruit’. Wall Street Journal, 30 March.
 Gbewonyo K 2012. Personal profile on wayn.com, URL: http://www.wayn.com/profiles/KodzoGbewonyo (accessed 20 July 2012).
 US patent 7,371,413.
 The US patent application is 20120136047. The PCT publication number is WO2010111584. The European patent application is EP2411029.
 Welch, CR 2010. Chemistry and Pharmacology of Kinkéliba (Combretum micranthum), a West African Medicinal Plant. Phd. Diss. Rutgers University.
Baldé NM et al. 2006. Herbal medicine and treatment of diabetes in Africa: an example from Guinea. Diabetes & Metabolism. v32 n2, April.
 Rutgers University n.d. Agreement on Benefit Sharing Policy Related to African and International Inventions. Obtained from Rutgers University under New Jersey Open Public Records Act (Request 1275), 15 May 2012.