102 



potatoes. The rationale at that time was that for tuber-propagated plants, the 

 propagating and edible portions of the plant are the same. 



PLANT VARIETY PROTECTION 



The PVPA of 1970 provides protection to sexually reproduced varieties that 

 breed true (inbred or true-breeding plant varieties produced from seed). The 

 purpose of this legislation was to extend IPR to sexually-reproduced species not 

 addressed in the PPA. Fl hybrids were excluded since trade secrecy affords 

 protection for those varieties and because they usually do not meet the 

 requirement for stability. To secure protection under PVPA, the variety must be 

 distinct, uniform, stable and named. The holder of the PVP certificate is 

 entitled to prohibit others from selling or offering the variety for sale, 

 importing or exporting the variety, or sexually multiplying the variety for 

 marketing. The exemption to the breeder's right is that the protected variety 

 can be used to develop another variety which is distinct from the protected 

 variety. This concept is critical to germplasm exchange. Secondly, the farmer 

 can save seed to plant the following year's crop. An unusual exemption that is 

 a legal nightmare is one that the farmer, whose primary farming occupation is not 

 seed growing, can sell to other such farmers without any obligation to the owner 

 of the PVP certificate. At present, potatoes are specifically exempted from PVP, 

 again, largely because the potato industry chose to not participate in IPR in 

 1970. 



UTILITY PATENTS 



Utility patents (or general patents) have only been granted since about 

 1985 for potatoes. As a result of the 1980 decision of the Supreme Court in 

 Chakrabarty vs. Diamond (206 USPQ 193) patents are available for inventions 

 consisting of living material provided that a significant degree of human 

 intervention was involved. For an invention to be patentable, it must be new, 

 industrial applicable, non-obvious, and subject to an enabling disclosure. 

 Although PPA covers sports, this is not true in the utility patents. Mere 

 discovery is not adequate. The purpose of an enabling disclosure requires that 

 the "invention" be described so that a person skilled in the art to which the 

 "invention" relates can reproduce it. For living material, like plant cultivars, 

 it is frequently impossible to precisely reproduce the same material. To deal 

 with this problem, an applicant may deposit a sample of the relevant living 

 material along with the description. These two components, description and 

 deposit, make up the enabling disclosure. However, there is no depository for 

 asexually propagated crops so the industry needs to answer this need. The holder 

 of a utility patent is entitled to exclude others from unlicensed reproduction, 

 using, or selling the "invention" throughout the U.S. In other words, the 

 utility patent is infringed upon if the patented potato cultivar is used for 

 breeding. 



The decision to obtain patent rights requires planning prior to applying 

 for the utility patent. For example, your rights can be invalidated if more than 



-2- 



