Ruling blights JHU harvest of broccoli sprouts

Judge invalidates school's patents on cancer-fighting crop

Result of `known process'

October 25, 2001|By Dennis O'Brien | Dennis O'Brien,SUN STAFF

A federal judge in Baltimore has invalidated the potentially lucrative patents that the Johns Hopkins University held on broccoli sprouts, ruling that the school and the company that markets the sprouts do not have exclusive rights to grow or sell them.

U.S. District Judge William M. Nickerson, in a ruling published yesterday, invalidated patents that the university obtained for broccoli sprouts in 1998 and 1999 after discoveries by Hopkins researchers about their cancer-inhibiting properties.

Nickerson said that the university had no right to patent the sprouts or to prevent others from growing or marketing them because farmers have been raising and selling broccoli sprouts for the past decade.

"It is a fundamental precept of patent law that a product is not patentable unless it is new," Nickerson wrote.

Hopkins was joined as a plaintiff in the suit with Brassica Protection Products LLC, a firm established in 1997 to market a broccoli sprout that Hopkins researchers say is rich in an antioxidant that may prevent cancer.

Brassica was co-founded by Dr. Paul Talalay and Jed Fahey, two Hopkins researchers who concluded in a 1997 study that sprouts rich in the antioxidant sulforaphane glucosinolate activate the body's defense mechanisms and may help prevent the development of cancers.

Brassica markets a product known as BroccoSprouts, which its Web site claims is "rigorously tested to certify that each batch contains high levels of this powerful antioxidant."

Antony Talalay, the researcher's son and chief executive officer of the company, said Hopkins secured three "process and method patents" in 1998 and 1999 by submitting applications that used the research to come up with a sprout that contains the highest possible levels of the antioxidant.

"The driving reason for getting into the business was to make sure the right broccoli sprouts are out there," Talalay said.

But Nickerson ruled that the researchers didn't alter the seeds or invent any new product but were "merely describing unexpected beneficial results of a known process."

"The court finds that they describe nothing more than germinating sprouts from certain cruciferous seeds and harvesting those sprouts as a food product," Nickerson wrote.

His decision is being appealed to the U.S. Court of Appeals in Washington, which handles patent appeals, according to Talalay and Philip M. Andrews, a lawyer for the defendants.

Andrews said the federal appeals court would probably hear arguments in the case in the next year.

"The key here is a patent is supposed to be for an invention, and our position was there was no invention here. These sprouts always had these beneficial properties," Andrews said.

He said the case raises the question of when discoveries involving agricultural crops should be patented. Patents on crops could mean control over the supply and cost of a crop by one patent holder, he said.

"If I make the discovery that the vitamin C in oranges has certain health benefits, should I be able to get a patent on the orange?" Andrews said.

Hopkins and Brassica sued farmers and food wholesalers in six states last year, including Edrich Farms Inc. of Randallstown, alleging that they violated patent laws by raising broccoli sprouts.

One of the suits, filed in U.S. District Court in Wilmington, Del., against Sproutman Inc. of Upper Black Eddy, Pa., led to a consent judgment Dec. 20, 1999, in which Sproutman agreed to stop selling broccoli sprouts.

The other five suits were consolidated into one case and assigned to Nickerson.

The growers deny that they did anything wrong.

"We have been selling them and we haven't stopped," said Edward Stanfield Jr., who runs Edrich Farms with his father.

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