31 



made in plant breeding, propagation, and biotechnology in the 

 potato. 



One major weakness of the Plant Patent Act is the lack of a re- 

 search exemption. Germplasm exchange is a key to further genetic 

 advance. Statutes that sequester this exchange would have a nega- 

 tive 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 addresses 

 this issue as being considered part of the PVPA revisions. The 

 Plant Patent Act does not address essential derivation. 



Lastly, the Plant Variety Protection Act application can be sub- 

 mitted by the breeders themselves and does not require an attor- 

 ney for submission. 



The UPOV Convention, from the potato point of view, is an 

 agreement between countries that grant a minimum level of pro- 

 tection for plant varieties on the basis of standard criteria. The 

 PVPA of 1970 provides a statute that most closely resembles the 

 plant breeders' rights defined by UPOV, but is currently limited to 

 only true-seeded propagated crops. 



Interestingly, other than the United States and the Republic of 

 Korea, there is no distinction between mode of reproduction and 

 form of protection in the statutes of other nations. 



To the potato breeders, essential derivation is a critical concept 

 in the revision of breeders' rights defined by the UPOV 1991 revi- 

 sions. With the 1991 UPOV agreement, it is possible that a modi- 

 fied 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 fa- 

 cilitate the exchange of technology and germplasm between breed- 

 ers and biotechnologists. 



A major concern to the breeders is the germplasm exchange, and 

 to maintain germplasm exchange, each patent should contain a 

 specific clause allowing use for crossing. However, with utility pat- 

 ents or the Plant Patent Act, this clause is not legislated, thus dif- 

 ficult to enforce. The Plant Variety Protection Act is the only form 

 of intellectual property rights that explicitly provides research ex- 

 emption, hence germplasm exchange. 



In conclusion, we have attempted to use utility patents as a form 

 of intellectual property rights for potato cultivars today. However, 

 utility patents are not an adequate form of protection in most cases 

 and have been denied recently by Frito Lay and North Dakota's va- 

 rieties. Therefore, we would like to find another form of protection 

 for the potatoes. 



The Plant Patent Act is not the best form of protection for pota- 

 toes, either. It does not provide the adequate level of protection, it 

 lacks the essential derivation concept, requires attorney counsel, 

 and has no research exemption. 



The Potato Association of America and the National Potato 

 Council support the form of intellectual property rights for plants 

 outlined in the 1991 UPOV Convention. The PAA and the National 

 Potato Council also advocate the inclusion of the potato in the 

 Plant Variety Protection Act under the revisions required by the 

 1991 UPOV treaty. This form of protection allows the breeder to 



