97 



1) consideration of the species in question, 



2) what form of reproduction occurs, 



3) whether the plant material is novel for the particular form of 

 protection, 



4) whether the "innovation" satisfies the criteria of the patent system, 



5) the expense or difficulty of securing one form of protection, and 



6) the scope of protection that is necessary to optimally exploit the 

 plant material. 



For brevity, the table below compares some of the key points of three 

 current forms of plant protection available in the U.S. (trade secrets are not 

 applicable to potatoes). See the appendix for some discussion on the various 

 forms of protection. 



Utility Patents 



Protects genes or unique 

 characteristics 



For new industrial 

 applications that are 

 non- obvious and subject 

 to enabling disclosure 



Covers unique feature 



No research exemptions 



PI. Var. Prot. Act (PVPA^ Plant Patents (PPA) 



Protects sexually 

 propagated varieties 



For varieties that are 

 distinct, uniform, stable 

 and named 



Covers seed 

 Research exemption 



Protects clonal 

 varieties 



For varieties that are 

 distinct, novel, non- 

 obvious 



Covers whole plants 

 No research exemption 



The potato, being an asexually propagated crop, should have been protected 

 through the Plant Patent Act of 1930 (PPA). It was not included in that statute. 

 The American Association of Nurseryman (AAN) and the National Association of 

 Plant Patent Owners (NAPPO) are suggesting the PPA be amended so that PPA 

 protection covers plant parts rather than whole plants and that the exemption of 

 "tuber-propagated crops" like the potato be eliminated. However, the PPA is a 

 60 year-old statute that does not address the technological advances that have 

 been made in potato plant breeding, propagation and biotechnology. One major 

 weakness of the PPA is the lack of the research exemption. The NPC and the PAA, 

 with strong conviction, support a research exemption because we believe that 

 germplasm exchange is the key to further genetic advances. Legislation or 

 statutes that sequester this exchange would have a negative impact upon genetic 

 advances in the potato. Another key issue is essential derivation. With 

 advances in biotechnology, essential derivation puts the plant breeders on par 

 with the genetic engineers. (A discussion on essential derivation can be found 

 below). The 1991 UPOV Convention addresses this issue and is being considered 

 a part of the PVPA revisions. The PPA does not address essential derivation. 

 Lastly, the PVPA application can be submitted by the breeders themselves, whereas 

 a PPA claim does require lawyers for submission. 



