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somaclonal variant, backcrossing, selection of an individual variant from 

 plants of an initial variety, or transformation by genetic engineering. 



To the potato breeders, essential derivation is a critical concept in the 

 revision of the breeder's rights defined by the UPOV 1991 revisions. For 

 example, if a plant breeder inserts a patented gene into his/her variety, the 

 resulting variety could fall within the scope of the patent enabling the patentee 

 to prohibit the exploitation of the variety by the breeder. On the other hand, 

 if the patentee inserts the patented gene into a PVP-protected variety, the 

 breeder of the variety has no possibility at present to forbid the exploitation 

 of that variety. With the 1991 UPOV agreement, it is possible that the modified 

 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 

 (and/or germplasm) between plant breeders and biotechnologists . 



HOW CAN WE MAINTAIN FREE EXCHANGE OF GERMPLASM? 



A major concern to the potato breeders is the maintenance of a free 

 exchange of germplasm. Traditional plant breeders fear that patents on genes and 

 other biotechnology products would deprive them of sources of germplasm for 

 classical recombination and breeding towards cultivar development. To maintain 

 free exchange of germplasm, each patent should contain a specific clause allowing 

 use for crossing, however, this clause is not legislated, thus difficult to 

 enforce. Presently, the Breeding and Genetics section of the PAA encourages 

 holders of potato patents to allow breeders to use the patented varieties in 

 breeding programs directed towards commercialization of new varieties, without 

 restrictions and without the threat of infringement. The PVPA is the only form 

 of IPR that explicitly provides a research exemption, hence, germplasm exchange. 



REVISING IPR FOR POTATO 



At this time, potato cultivars can be protected as utility patents under 

 the Patent Act in the U.S. and in Canada under the Plant Breeder's Rights Act 

 (PBRA). Those are not equivalent in the level of protection nor do they have 

 similar standards for documentation and release. The Canadian PBRA provides the 

 required varietal protection, enables the breeder to collect royalties, and 

 recognizes the free availability of germplasm for use in further crossing. Their 

 IPR for potatoes were developed to be in alignment with the 1978 UPOV treaty. 

 The PVPA is the corresponding legislation in the U.S. to provide breeder's rights 

 similar to Canada. If potatoes could be protected through the PVPA we would have 

 essentially equivalent systems of varietal protection in North America. The PAA 

 and NPC support the inclusion of the potato in the PVPA legislation that is 

 currently being revised to be in alignment with the 1991 UPOV Convention. 



CONCLUSION 



We have IPR for potato cultivars today, however utility patents are not an 

 adequate form of protection in most cases. Besides their cost to submit a claim, 



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