30 



Secondly, since the 1920s, potato breeding and germplasm re- 

 search in the United States has been the primary responsibility of 

 the USDA and land-grant institutions. In some States, there has 

 been a reduction in funding in public breeding efforts and a loss of 

 breeding programs in some States, and these States include Ne- 

 braska, North Dakota, Indiana, Pennsylvania, Louisiana, Washing- 

 ton, and North Dakota in the past decade. 



We feel that with the reduction in funding we need to explore 

 other avenues to gain support for these programs and we feel vari- 

 ety protection, hence royalty collection, would be a means of sup- 

 port and also promote technology transfer. 



Recently, the private sector has invested in biotechnology-based 

 research to develop new potato varieties, and the industry has 

 based these upon publicly-released varieties. The potato crop is on 

 the forefront of genetic engineering, and there are many field tests 

 currently going on to test this crop for insect resistance to reduce 

 pesticide use. 



The influx of the private variety sector development requires 

 that the public potato breeders collaborate with this sector of re- 

 searchers so that the best germplasm reaches the growers. The 

 high investment costs of this research requires that the private 

 sector recoup their investment and to seek means to protect their 

 invention. 



Moreover, this relationship requires both breeders and genetic 

 engineers to have equivalent levels of intellectual property protec- 

 tion. 



Why does the PAA and the National Potato Council desire to 

 have the potato included in the Plant Variety Protection Act? The 

 United States was the first country to make specific provision to 

 protect new plant varieties through the Plant Patent Act of 1930. 

 The potato was excluded from this form of protection at that time. 



Today in the United States, as you stated earlier, four forms of 

 protection exist: trade secrecy, the Plant Patent Act, the Plant Va- 

 riety Protection Act, and utility patents. We have been able to pro- 

 tect some potato varieties and germplasm with utility patents. 

 However, this means to protect them was done by default, not by 

 design. 



However, the ability to utilize utility patents is in question at the 

 moment. Frito Lay, a private company, and North Dakota have 

 each attempted to utilize utility patents to protect their varieties 

 and have been denied. So at this time, we really do not have any 

 form of protection to protect our potato varieties. 



The problems that the patent office sees is the question of nonob- 

 vious and the problem of an enabling disclosure for the potato. 

 Also, in our opinion, we don't support the utility patent as a form 

 of protection because it doesn't address the issue of research ex- 

 emption nor essential derivation. We feel that we need a better 

 form of protection. 



My table in the written testimony summarizes some of these 

 issues in a concise manner. 



The potato, being an asexually propagated crop, should have 

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

 included in that statute. However, the PPA is a 60-year-old statute 

 that does not address the technological advances that have been 



