Protecting rainforest-derived technology equitably

By Jorge A. Goldstein, Senior Director, Sterne, Kessler, Goldstein & Fox PLLC, Washington DC, USA

Indigenous peoples known as the Emberá live in the rainforests of Colombia. The Emberá, traditionally semi-nomadic hunter-gatherers, have lived in the Chocó region at least since the sixteenth century. They co-exist with Afro-colombian communities that settled the same territory from the colonial period when they were brought as slaves for mining operations. More recently, the construction of the Pan-American highway, mechanized illegal mining and large-scale deforestation have encroached on the lives of these communities. Having lost their precious forests, many become subsistence farmers or employees in non-sustainable activities.

One of the Emberá joys is body painting. For as long as records show, they, and the Afro-colombian communities with whom they co-exist, have used the dark blue juice of the fruit from the jagua tree (Genipa americana) to decorate themselves for rituals, ceremonies, or just for fun. 

In the early 2000s, a privately funded Colombian company, Ecoflora Cares, working with an organic chemist from a local university in Medellín, extracted the active ingredient from the blue juice of the jagua fruit and, through a novel process, developed  a stable and free-flowing powder. The powder has a beautiful cobalt-blue color.

Ecoflora wished to commercialize the powder, but in a way that would respect the sustainability of the fruit and benefit the local communities from which it originated. Therefore, in the spirit of the Convention for Biological Diversity and the Nagoya Protocol (CBD/Nagoya), Ecoflora worked with national and local government and various non-governmental organizations (NGOs), to create a business and regulatory network that would allow them to ethically source the fruit and develop the blue powder for use as an additive for foods, drinks and cosmetics. They entered into agreements with several Emberá community groups to produce the jagua fruit for commercial partners. Through a benefit sharing agreement, these Emberá suppliers share in benefits (both monetary and non-monetary) of any commercialization of the jagua-derived blue powder and its application.

About seven years ago, Ecoflora approached our law firm for help in obtaining patents on the blue powder and its applications. They had learned of the firm’s pro bono program through Public Interest Intellectual Property Advisors (PIIPA), an NGO based in Washington, DC, that connects intellectual property (IP) pro bono lawyers with potential clients worldwide. 

The firm’s pro bono practice

Sterne Kessler’s pro bono practice is inspired by the idea of redeeming economic, social and cultural rights through IP. We help disenfranchized communities benefit from their creations by gaining commercially important IP rights and using them to advance their economic, social and cultural rights  – that is, jobs, healthcare, shelter and food – in line with the United Nations Covenant on Economic, Social and Cultural Rights (Article 15 (1)) of 1976.

We believe that impoverished and underrepresented communities from the developing world can use IP rights to benefit from the commercialization of their products in advanced, predominantly northern, markets. The aim is to reverse the traditional flow of technology from the North to the South with associated revenues flowing northwards, and to ensure that when technology from the South flows to the North, the associated revenues flow back to the communities from which the base resources originated. We think of this as a sort of “reverse technology transfer.” On the strength of the work we have done around this simple concept, in 2015, the Financial Times of London gave the firm’s pro bono program its “Most Innovative North American Lawyers Award for Innovation in a Social Responsibility Project.”

When, in 2011, we looked into the Ecoflora blue color proposal, we knew that we had found a worthy project. While the use of juice of the jagua fruit for body painting originated with the tribe, the development of a stable blue powder was not the invention of any one member of the Emberá. Protecting Ecoflora’s creation of a stable blue powder also allowed us to leapfrog over another issue that arises often with direct representation of a tribe. Tribal property, including collective know-how, is treated communally, not individually. The patent systems of the world, however, require the naming of individual inventors. This is a problem when dealing with communal IP. Thus, focusing on a downstream invention developed by a university chemist and owned by a private company simplified matters. And, since Ecoflora was abiding by CBD/Nagoya, we felt that representing the company, for the benefit of the community, was a worthwhile endeavor. We rolled up our sleeves and went to work.

Obtaining patents

We have since submitted patent applications across the globe via WIPO’s Patent Cooperation Treaty; see, for example, PCT/IB2014/001735. The applications cover Ecoflora’s blue-colored powder, its detailed chemical composition, its manufacture, and its use in the production of consumer products, such as foodstuffs, personal care goods, or medicaments.  Several patents have issued; see, for example, U.S. Patent No. 9,376,569.  Our client now has patent protection in tropical countries, such as Brazil, Costa Rica and Peru, where the jagua tree may grow and where the production methods may be used; as well as in the United States and Europe, where the substance may be used to color foods and drinks.

While the United States has not signed up to the CBD/Nagoya, many of the countries in which we have obtained patents for Ecoflora have done so. Therefore, in order to let the world at large know that Ecoflora will commercialize a blue powder derived from a rainforest genetic resource, we voluntarily included in issued U.S. patents a “Statement of Access and Benefit Sharing.” The statement explains that any sourcing or commercialization of the resource must comply strictly with the principles of CBD/Nagoya.

In parallel, Ecoflora started testing the powder extensively to obtain regulatory approval for its use in edibles, cosmetics and medicines from the United States Food and Drug Administration and similar entities. These regulatory efforts are well on their way to completion, with encouraging results.

Doing deals

Ironically, filing and obtaining patents, and undertaking testing to obtain safety approvals, have turned out to be the easier parts of the project. More difficult has been the task of convincing some of the world’s major food additive companies to partner with Ecoflora to bring blue foods and drinks to international markets.

It is not that these companies were skeptical about adding blue to edibles – quite the contrary. The food industry has referred to Ecoflora’s blue as the “missing holy grail.” Blue is scarce in nature and hence there is a dearth of safe blue coloring for foods and drinks. This is especially the case with respect to carbonated drinks, which are acidic (typically with a pH of 3 to 4), and in which most existing blue additives break down. So, the food industry has been searching for a stable blue color that would have a long shelf-life in fizzy drinks for some time. Ecoflora’s jagua blue powder meets their requirements. Its active ingredient does not easily degrade at the pH of sparkling drinks. Nor did the companies have any problem with testing for regulatory approvals, the patent protection we had obtained, or the need to comply with the CBD and the Nagoya Protocol. Their problem was, let’s say, cultural.

The idea of “reverse technology transfer” was new to them and they were skeptical. The idea of paying for a Colombian technology derived from indigenous peoples seemed foreign. Several offered to buy the fruit outright but were unwilling to license the IP. In spite of such resistance, we continued our efforts in the firm belief that IP is a great equalizer, and would give indigenous communities negotiating power they had never had.

In 2017, we helped our client organize a worldwide virtual auction, using our firm’s servers in Washington, DC, as an extranet where we placed several dossiers of information. After the companies paid an access fee and signed non-disclosure agreements, we gave each of them a unique password, and they received access to several databases: regulatory and patent information; process trade secrets; a model supply and licensing agreement; and projected business models.

After evaluating 12 offers of interest, Ecoflora signed a deal with a major European concern in the form of a supply and IP licensing agreement under which Ecoflora will receive compensation for the sale and distribution of the blue powder used in foods and beverages. The legal and contractual groundwork laid out under the CBD and the Nagoya Protocol assures that the Emberá community suppliers will also receive benefits.

The big picture 

The jagua blue deal is the culmination of almost eight years of legal work and intense negotiations by a team made up of our pro bono group and our client. It is premature to conclude whether the project will achieve the success we hope for. A project like this is built one brick at a time. Each brick is a significant, although small, success: establishing a CBD/Nagoya framework; obtaining patents; obtaining regulatory approval; finding the right multinational company to do the deal; and negotiating and executing an agreement that respects the IP of a small South American company driven by a determination to benefit indigenous communities and their beloved rainforest.

Only time will tell if this groundwork will be sufficient to improve the lives of the Emberá. But the seeds have been sown.

What this project also shows is the value of pragmatic, practical approaches to what is a vexed area of IP policy-making. It should be noted that WIPO’s Traditional Knowledge Division supports continuous international negotiations on these issues; it also provides practical capacity-building assistance to indigenous and local communities as to how they can make smart and effective use of IP tools and negotiate fair contracts.  

I venture to guess that the Emberá don’t really care whether their drinks are colorless or blue, sparkling or plain. They probably shake their heads at the notion that consumers in the United States or Europe would spend money to buy a blue fizzy cold drink in order to “hydrate.” Maybe someday, when they see the benefits that flow to them from the sale of blue pop drinks in New York or Paris, they will – fortunately or unfortunately – care. Such are the ways of the modern world.