55 



Third, the private sector has invested in biotechnology-based re- 

 search to develop new potato germplasm for the industry based 

 upon publicly released varieties. The influx of the private sector va- 

 riety development requires that public breeders collaborate with 

 the sector of researchers so that the best germplasm reaches the 

 growers. 



The high investment costs of this biotechnology research requires 

 that the private sector recoup their investment, and to seek means 

 to protect their invention or innovation. Moreover, this relationship 

 requires both breeders and genetic engineers to have equivalent 

 levels of intellectual property protection. 



The United States was the first country to make specific provi- 

 sions to protect new plant varieties. Today, we have four forms of 

 protection available for plant material. They are trade secrecy, the 

 Plant Patent Act of 1930, the Plant Variety Protection Act of 1970, 

 and utility patents. 



The potato, being an asexually propagated crop, should have 

 been protected through the Plant Patent Act of 1930. It was not in- 

 cluded in that statute. However, now the PPA or the Plant Patent 

 Act is a 60-year-old legislation that does not address the techno- 

 logical advances that have been made in plant breeding, propaga- 

 tion and biotechnology in the potato. 



One major weakness of the Plant Patent Act and utility patents 

 is the lack of the research exemption. Germplasm exchange is a 

 key to further genetic advances. Statutes that sequester this ex- 

 change would have a negative impact upon genetic advances in the 

 potato. 



Another key issue is essential derivation. With advances in bio- 

 technology, essential derivation puts the plant breeders on par with 

 the genetic engineers. The 1991 UPOV convention specifically ad- 

 dresses this issue as being considered a part of the PVPA revisions. 

 The Plant Patent Act and utility patents do not address essential 

 derivation. 



Last, the PVP application can be submitted by the breeders 

 themselves, whereas the PPA claim requires lawyers for submis- 

 sion. 



The UPOV convention, in effect, is an agreement between coun- 

 tries, approximately 23 or 24, to grant a minimum level of protec- 

 tion for plant varieties on the basis of standard criteria. The Plant 

 Variety Protection Act of 1970 provides the statute that most close- 

 ly resembles the plant breeder's rights by UPOV. Interestingly, 

 other than the United States or the Republic of Korea, there is no 

 distinction made between the form of protection and the mode of 

 reproduction. 



To the potato breeders, essential derivation is a critical concept 

 in the revision of the breeder's rights defined by the UPOV 1991 

 revision. With the 1991 UPOV agreement, it is possible that a ge- 

 netically engineered variety will be defined as essentially derived 

 and fall within the scope of protection of the protected variety. It 

 is envisioned that this new balance established between the two 

 systems will facilitate the exchange of technology which could be 

 germplasm between plant breeders and biotechnologists. 



A major concern of potato breeders is the maintenance of free ex- 

 change of germplasm. To maintain the free exchange of germplasm, 



