Taro patent protest letter

February 23, 2006

David McClain, Interim President
University of Hawaii
2444 Dole Street
Bachman 202
Honolulu, HI 96822

RE: University of Hawaii?s patents on three taro varieties

Dear President McClain,

We are writing to request that the University of Hawaii abandon its U.S. patents, as well as any
World Intellectual Property Organziation patents it may hold, on three varieties of Hawaiian taro
(Colocasia esculenta) ? Pauakea, Pa?lehu and Pa?akala. On each of these U.S. patents, Eduardo
E. Trujillo is listed as ?inventor,? while the University of Hawaii is the assignee.

Pa?akala

U.S. Patent No. PP12,342

Granted January 8, 2002

Pa?lehua

U.S. Patent No. PP12,361

Granted January 22, 2002

Pauakea

U.S. Patent No. PP12,772

Granted July 16, 2002.

Our grounds for this request are as follows:

1) Prior art: According to the patents, the female parent of all three patented varieties is ?Maui

Lehua,? an unpatented cultivar that ?belongs to the Group Lehua of Hawaiian-Polynesian
taros.? As you know, Hawaiian-Polynesian taros derive from a few varieties first introduced
to Hawaii in the 4

to 5

century A.D. by the Islands? earliest settlers. From these few

varieties, Hawaiians conducted extensive breeding over centuries to generate over 300 types
of taro suited to differing microenvironmental and cultivation conditions. These varieties of
taro were developed for food as well as ceremonial and medicinal uses.

Roughly 63

varieties, including Maui Lehua, are extant. Therefore, the qualities of the patented varieties
derive to a considerable extent from Maui Lehua, whose properties are the result of many
centuries of breeding efforts by native Hawaiians. Thus, the patent claims for the three
patented varieties are invalidated by considerations of prior art.

2) Failure to validate claimed properties: Irrespective of prior art considerations, the patents

are invalid due to the failure of the ?inventor? to properly validate claimed properties of the
patented varieties. In a bulletin of the College of Tropical Agriculture and Human Resources
released in August of 2002, soon after the third patent was issued on July 16, 2002 (for
Pauakea), the ?inventor? and his colleagues candidly admit that:

?To date, only preliminary observations are available on the soil and nutrient
requirements, disease susceptibility, crop duration, and yield of the three new cultivars

Cho, John J. ?Breeding Hawaiian Taros for the Future.? Cho is a professor at UH?s Dept. of Plant and

Envrionmental Plant Sciences, Maui Agricultural Research Center.

[i.e. the three just-patented varieties]. No controlled experiments have yet been done to
confirm the preliminary observations mentioned here.? (emphasis added)

In each of the patents, ?resistance to leaf blight caused by Phytophthora colocasiae,?
?(high) tolerance to root rot caused by Pythium spp.? and ?(extra-)large mother corm
size? are explicitly cited as claimed properties of the patented varieties. The first two
claimed properties fall under the head of ?disease susceptibility,? while the latter
claimed property is the primary determinant of ?yield.? Thus, the patents were
granted on the basis of putative properties that were ascribed on the flimsy basis of
?preliminary observations? that had not been confirmed by controlled experiments.

3) Licensing agreement: In addition, we object to several aspects of the licensing

agreement that farmers must sign in order to obtain the patented cultivars, such as the
collection of a 2% royalty on gross sales of corm. The collection of royalties from
farmers whose taxes already support the University?s operations, including taro
breeding activities, is abhorrent. It represents a superfluous and unjust levy on
Hawaiian taro farmers.

The licensing agreement also prohibits Hawaiian farmers from selling, breeding or
conducting research on the licensed plants. Such provisions can only stifle creative
breeding and research on the part of Hawaiian farmers, which UH, as an institution
charged with serving the public good, should encourage rather than prohibit.

Finally, the licensing agreement requires farmers to grant UH unrestricted access to
their property to inspect, evaluate or retrieve samples of the plants. Such provisions
invest UH with police-like powers to conduct intrusive inspections of farmers? private
property, powers unbefitting a publicly-funded institition whose mission is to serve
rather than police Hawaiian citizens, including its farmers.

On the basis of the foregoing, we respectfully request that the University of Hawaii
abandon the U.S. patents assigned to it for the taro cultivars Pa?lehua, Pa?akala and
Pauakea, and also abandon any world-wide patent rights it has obtained for the same.

Failing a positive reply to our request, we will be forced to take legal action at the U.S.
Patent and Trademark Office through our counsel to have these patents revoked.

Sincerely,

Walter Ritte,
Chris Kobayashi

Trujillo, Eduardo E. et al. ?Promising New Cultivars with Resistance to Taro Leaf Blight: ?Pa?lehua?,

?Pa?akala?, and ?Pauakea?,? Cooperative Extension Service, College of Tropical Agriculture and Human
Resources, University of Hawai?i at Manoa, August 2002.