Dutch court rules that patents based on Ethiopian Teff flour lack inventiveness - Ancientgrain BV and Bakels Senior NV

Earlier this month, former Commissioner of the Ethiopian Investment Commission, Fitsum Arega went on his Twitter page to celebrate the judgment of the Dutch Court of Hague in Ancientgrain BV and Bakels Senior NV delivered on 21st November 2018 and what it means for Ethiopia’s long-fought battle to legally export its popular Teff flour. In that case, the Court of Hague held that there was no infringement of two Dutch patents that refer to (the processing of) Teff flour because those patents lack inventiveness. See the judgment in Dutch, here. [This African Correspondent used Google Translate]

The facts
Ancientgrain instituted an action against Bakels for patent infringement. It claimed that, by offering Teff bread flour mix covered by the scope of its (Ancientgrain) patent, Bakels infringed its patents (NL 977 and NL 978). It claimed inter alia, damages for patent infringement, compensation of €150,000 and its full litigation costs. See paragraph 3.3 of the judgment.

Ethiopian Flag
Ancientgrain became the patent holder in 2014 as the successor-in-title of the previous patentee. The patents refer to flour mixtures of Teff, dough variants made from them and food products and related methods. See paragraph 2.5 of the judgment.

In its defence, Bakels argued that it could not be liable for patent infringement as the patents were invalid due to lack of novelty, or at least inventiveness. Bakels further claimed that Ancientgrain acted unlawfully because it knew or ought to have known that its patents would not stand up in proceedings. It further counterclaimed for the cost of the litigation and attorneys’ fees for €145,250.24, damages in respect of the bank guarantee for the Teff and damages for illegal litigation. See paragraphs 3.5 to 3.7 and 4.26 to 4.27 of the judgment.

The decision

In its judgment, the Dutch Court of Hague held that the patents were invalid as none of the various features described in the claims [ripening characteristic, preferred range, mixing with flour from another crop] conferred inventiveness. See paragraph 4.24.

It also held that the claims on the patents combined or considered separately were obvious and lacked inventiveness. Accordingly, the court rejected the patent claims and held that no infringement could be made on invalid patents. See paragraph 4.24 of the judgment.

Oh teff!
The Court granted the counterclaim for the cost of litigation but rejected the claim for damages based on illegal litigation on the grounds that it would not be unlawful per se for a patentee to sue to enforce its patent rights. For such enforcement action to be unlawful, the person entitled must know or realize that there is a serious, not insignificant chance that his right will not stand in a procedure. See paragraph 4.27.

The outcome of this case has been widely celebrated in Ethiopia. The Ethiopian Government had been engaged in several legal and diplomatic battles to get the patent holder to relinquish the patent or have the patent cancelled in the Netherlands and in five other countries. The patent had prevented Ethiopia from exporting the Teff flour to Europe and other countries. While the patent will no longer be enforceable in the Netherlands, Ancientgrain still holds similar patents in the UK, Italy, Germany, Belgium and Austria. [These patents are said to be up for expiration in 2024 raising questions about the practicality of expending time and financial costs to invalidate the patent.]

This decision and the events in Ethiopia prior to the decision raise some key points:

(i) There is much talk regarding an access and benefit-sharing agreement executed in 2005 between the Ethiopian Government (through the Ethiopian Institute of Biodiversity Conservation (IBC) and the then Ethiopian Agricultural Research Organization (EARO) and the predecessor of Ancient Grain, Health and Performance Food International (HPFI) [Discussed here.] The agreement provided HPFI with access to specified varieties of the Teff and with the right to use these varieties to produce a wide range of specified food and beverage products not traditional in Ethiopia. In return, HPFI was to share monetary and non-monetary benefits with Ethiopia, as well as research cooperation and the sharing of research results. The claim is that HPFI’s directors had established other companies and transferred values to these companies, which continued to produce and sell Teff flour and Teff products, prior to filing for bankruptcy. This chain of bankruptcy and transfer of assets has made it difficult for the Ethiopian Government to claim its benefits under the asset sharing agreement.

Company law provides for the application of the doctrine of lifting the veil of incorporation when the directors of a company have employed the engine of corporate personality for fraud or improper conduct. Just as the Ethiopian Government’s end of the bargain remained valid regardless of any change of government, corporate succession should be applicable to HFPI and its successors-in-title and it should be possible to lift the corporate veil to hold such successors-in-title responsible for the obligations of HFPI under the access and benefit-sharing agreement.

(ii) Given this access and benefit-sharing arrangement regarding the Teff flour, can the Court’s holding regarding it not being unlawful per se for a patentee to sue to enforce patents, still hold water? In this case, Ancientgrain knew that its right was at best, shaky given the provisions and existence of the access and benefit-sharing arrangement.

(iii) The circumstances of the case with the history of the Teff flour in Ethiopia bring to the fore the challenges of recognising new categories of property in traditional knowledge goods such as genetic resources. Given that the knowledge of the ripening process of Teff and its other natural qualities has been held to lack “inventiveness”, do all other forms of intellectual property rights fail the Ethiopian nation? Does the fact that the claims in the invalidated patent are “public knowledge” in Ethiopia place that knowledge in the public domain? It should be remembered that while genetic resources such as the teff grain, are products of nature, they are also products of years of ingenuity and skill that have produced their current genetic makeup.

(iv) Ancientgrain through its predecessor-in-title has held the patent in the teff flour mix since 2007 and have prevented Ethiopians from validly exporting the Teff. However, while Baskels would receive compensation in terms of its costs of litigation, how would and should the Ethiopian people be compensated for loss of export earnings from the Teff? Can the access sharing agreement provide the basis for such compensation?

Given the fact that the exploitation of traditional knowledge and genetic resources outside their place of origin is widespread and prohibitions of patenting of genetic resources are easily circumvented, there may be need to mandate notification to an international body whenever access-sharing agreements are executed. This may further necessitate the requirement that patent applications relating to genetic resources show certification from the international body that the claims in the patent are not covered by any access-sharing agreement. Using the teff example, Ethiopia would have notified an international body, say WIPO, that an access-sharing agreement was executed regarding its Teff grain. Ancientgrain in filing its patent application would have needed to show a certificate from WIPO confirming that its claims in the patent application are not covered by the access-sharing agreement.

Too much bureaucracy though?

Dutch court rules that patents based on Ethiopian Teff flour lack inventiveness - Ancientgrain BV and Bakels Senior NV Dutch court rules that patents based on Ethiopian Teff flour lack inventiveness - Ancientgrain BV and Bakels Senior NV Reviewed by Chijioke Okorie on Monday, February 25, 2019 Rating: 5


  1. This report is one in a series of reports that have reached the Dutch newspapers and even the 8 o'clock news on the patent on teff.
    The case that is reported here was indeed an infringement case between the Dutch patent holder and one of its competitors. However, in spite of the suggestion that is made in this report, the Ethiopian government has not played any role and/or has not had any influence on the outcome of this case.

    Indeed the patent has been found invalid, because it was denied an inventive step. However, in spite of the suggestion in the report that this was on basis of lack of inventivity over the traditional knowledge of Ethiopia on the culturing and use of the teff grain, it was found to lack inventive step over a newsletter that was published by the patentees themselves prior to the priority date of the patent(s) in suit.

    In the comment to the report, the author mentions that the patent would prevent Ethiopia to export teff flour to Europe. This is certainly not (completely) true. Initially the patent covered a subset of teff flour with specific characteristics (which would make it suitable for baking ‘modern’ baking products, such as bread), but during the court case that patent was voluntarily limited to a method for baking these baking products using this special selection of teff flour. It is thus incorrect to state that the patent would prevent people (in Europe) to make injera – the traditional Ethiopian bread. As a matter of fact, the production of injera was literally excluded from patent protection in the claims of the patent.
    Accordingly, there was no limitation to the Ethopians on exporting teff for the uses for which it was traditionally used.

    Also the ‘claims’ from the Ethiopian government that they are fighting the validity of the patent before the Court of Arbitration in Paris are questionable. As a matter of fact, I am the patent attorney that has drafted and prosecuted the patent and the patentee, nor I as his legal representative, have never been informed about any action against the Dutch patent or any of its European equivalent patents other than in the presently reported court case (where the Ethiopian government was not involved).

    Regarding the access and benefit of ‘traditional knowledge’ it should be stated that the patentees did negotiate an agreement with the Ethiopian government already in 2005. Please remember that such an action at that time was far from obligatory, since, although the Biodiversity Convention was already concluded at that time, there was not yet a thing like the Nagoya protocol, nor had Ethiopia any legislation regarding access to genetic resources. The suggestion that Ethiopia was not able to claim its benefits because of the bankruptcy of the company that originally closed the agreement also is not trustworthy, because there have been no benefits to share at all thus far. Maybe the Ethiopian government wants to share the losses due to the court decision with the patentees?

    The suggestion from the author to have access and benefit-sharing agreements be notified to e.g. WIPO seems a nice suggestion, but is nowadays in principle already implemented through the Nagoya protocol, that already recognizes that a party that wants access to genetic resources should establish prior informed consent and should conclude an agreement on mutually accepted terms. Countries that have the Nagoya protocol implemented in their legislation then can provide the applicant with an internationally-recognized certificate.

    All in all, I find it a pity that this case is misused to make unjustified propaganda. Especially, this is a pity, when not only local newspapers (that do not understand patents) make room for this propaganda, but when a respected and top IP-blog publishes a report like the current one.

  2. Dear Mr Van Wezenbeek,

    That some propaganda has been made about this case by people not having a clue about patents, and that journalists sometimes oversimplify matters to make them more palatable is not a surprise.

    But this does not warrant your reply and its condemning tone. It is clear that traditional knowledge was not the source of the lack of inventive step. It was a publication by the applicants which was fatal. The problem with traditional knowledge is that is often not written down with all the certainty needed in the patent business.

    On the other merely browsing through general literature about flour and baking, one get the feeling that the flour claimed was the mere result of trial and error. It appears to be a well-known fact that flour has better qualities when the grain is stored before milling. This is valid for lots of flours from different grains, and it cannot be surprising that it applied to teff grains.

    But there is sometimes some justice. By wanting to sell stuff before having filed an application on it, is nothing new. It happens time and time. I wonder if they told their representative at the time that important information was disseminated beforehand


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