On April 27, 2006 the United States Patent and Trademark Office (USPTO) published a patent application for a beverage made from extract of mangosteen pulp and pericarp, wherein the owner of the application is an American corporation, namely Nature’s Sunshine Products Inc. The said patent application has created some controversy due to the fact that the Nature’s Sunshine’s claim for patent protection is now subject to a claim by a Thai body that the said patent application is not novel on the grounds that such an extract has been known to exist in Thailand before the patent application was made.
Following the publication, Witoon Lianchamroon, the Director of Biodiversity and Community Right Action, Thailand (Biothai), a non-profit organization, stated in the local Thai media that the mangosteen fruit originates from Thailand, and that mangosteen trees are commonly cultivated there to the extent that the country grew the largest volume of the said fruit commercially. He alleged that mangosteen juice extracted from pulp has been obtainable in Thailand for a considerable period time before this and therefore it is illogical for Nature’s Sunshine to claim patent rights for the said product. Accordingly, one of his main concerns is that should the patent application as it stands be granted in the United States, Thai exporters may face difficulties in exporting mangosteen in the form of extracted juice to the United States, as this would fall within the claims of the patent and be considered an infringing act.
The United States Application
The United States application, which has been published as US 2006/0088643 A1 which is entitled “Neutraceutical Composition Containing Mangosteen Pericarp Extract”, was filed in October 27, 2004. The application contains 17 claims, and provides a wide scope of protection with respect to a neutraceutical beverage comprising a pericarp extract from mangosteen and juice from mangosteen fruit pulp, as claimed in the independent claim 1. The subsequent dependent claims cover various combinations of the beverage with other fruit juices and also protect other forms of extraction. As a result, the patent application fully exploits the benefits of the extract and the active ingredients of mangosteen. It is also widely known that most of the active ingredients contained in mangosteen belong in a class of phytochemicals called xanthones. The application further contains brief comparison details between the formula as protected in the application and other existing formulas out in the market, i.e. Xango, Mango-Xan and Tahitian Noni, in relation to their chemical capacities.
However, it is mentioned in the ‘background of invention’ column of the patent specification that the mangosteen tree is cultivated in Thailand among other Asia countries, and originated from the Sunda Islands of Indonesia. This declaration therefore is contrary to the statement made by Mr. Liamchamroon, wherein he claims that the mangosteen tree originated from Thailand.
Thailand has now submitted an objection to the United States Patent and Trademark Office to register their concerns over the pending application. One of their assertions is to highlight the fact that the mangosteen juice of similar formula has been produced in Thailand for a considerable period, which if proven correct would be an issue to be considered given the requirement of worldwide novelty.
Thailand is also quite concerned on the existence of patents that they may not be aware of in various other countries, particularly European countries, which form the major market for fruits and juice extracts. There is also concern as regards to other Thai products that face similar risks of being patented in other countries such as their traditional cuisine, massage and spa and herbal drugs.
Thailand is also currently challenging a Japanese patent in regard to Ruesi Dad Ton (hermit body twists) – a traditional Thai massage and exercise. The country’s Intellectual Property Department is in the midst of gathering sufficient evidence to be submitted to the Japanese Patent Office to invalidate the patent.
Biothai has reported that based on their research they have found many patents around the world that should not have been granted as they cover indigenous Thai products and know how and out of these, about 70% of the patents and patent applications concerned have cropped up in Japan, being a country that has recently signed a Free-Trade Agreement [FTA] with Thailand. Thereafter the next greatest number of such patents was found to be from the United States.
In view of increasing international trade and the crucial role that patents play, it is important for the Thai government and industry groups to assess the situation and ensure that patents which can affect their traditional exports and are not granted and that information of prior art are disseminated to the various patent officers to notify them of the lack of novelty especially where there is pre-grant publication.
Boonlaksana Ruamsaka, the Intellectual Property Department’s Deputy Director General has suggested a database of Intellectual Property that can be used as a reference by various other countries. This course of action may aid to prevent patents that are not novel from being granted. However, the Thai government and industry groups could well utilize current search mechanisms to ensure the relevant applications are spotted and information on prior art is provided to the patent examiners concerned.