33 



Moreover, this relationship requires both breeders and genetic engineers to have 

 equivalent levels of intellectual property protection. 



Why does the PAA and NPC desire to have the potato included in the PVPA? 



The United States was the first country to make specific provision to protect new 

 plant varieties (PPA 1930; in 35 U.S.C., sections 261 to 264), which is embodied 

 through the Plant Patent Act of 1930. The potato was excluded from this form of 

 plant protection. Today, in the United States, we have four forms of protection 

 available for plant material. These are: trade secrecy, The Plant Patent Act of 1930 

 (PPA), The Plant Variety Protection Act (PVPA) of 1970, and utility patents. 



Currently, we can protect potato varieties and germplasm with utility patents, 

 therefore the means already exist to obtain intellectual property rights (IPR) for po- 

 tatoes. This means to protect potatoes in the United States was nonexistent until 

 utility patents began to be granted to plants in the mid-1980's. Hence, the develop- 

 ment of IPR for potatoes through utility patents occurred by default, not by design. 

 The question the PAA asked is whether this form of IPR is what is needed by the 

 industry, researchers and breeders, or do we need other forms of protection? 



In general, decisions concerning the form of protection to seek for a particular 

 plant should involve: 



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. 



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 United States. (Trade secrets are not ap- 

 plicable to potatoes.) See the appendix for some discussion on the various forms of 

 protection. 



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



Protects genes or unique Protects sexually propagated varieties Protects clonal varieties 



characteristics 



For new industrial applications that For varieties that are distinct, uniform, For varieties that are distinct, novel, 



are nonobvious and subject to stable and named nonobvious 



enabling disclosure 



Covers unique feature Covers seed Covers whole plants 



No research exemptions Research exemption 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 Nurserymen (AAN) and the National Association of Plant 

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

 tion 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 con- 

 viction, 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. An- 

 other 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. 



POTATO PERSPECTIVES ON UPOV 



The UPOV (Union pour la Protection des Obtentions Vegetales) Convention is, in 

 effect, an agreement between countries (currently about 23) to grant a minimum 

 level of protection for plant varieties on the basis of standard criteria. Breeders' 

 rights are granted upon a variety when it is deemed novel, distinct, uniform and 

 stable. A minimum of 15 years of protection is given for most plants. Any protected 



