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variety must be freely available for breeding, such as the source of initial variation 

 in developing other varieties (part of the research exemption clause). The United 

 States signed this agreement and the 1978 revision is currently in effect. However, 

 this does not mean that our statutes are in alignment with the UPOV treaty for all 

 species and genera (such as the potato). 



Each country has its own set of laws to protect plant material to be in alignment 

 with the UPOV agreement. The PPA and PVPA are the U.S. statutes intended to 

 be part of this system of international protection of rights to plant properties usual- 

 ly referred to as "breeders' rights." The U.S. laws for plant IPR are not in align- 

 ment with most UPOV countries. Changes to the PPA are necessary to bring the 

 PPA into compliance with the 1991 UPOV Convention. The PVPA of 1970 provides 

 the statute that most closely resembles the plant breeders' rights defined by UPOV; 

 however, only true-breeding seed crops are protected by the PVPA. Interestingly, 

 other than the United States and Republic of Korea, there is no distinction made 

 between protection and mode of reproduction. 



Technology to genetically improve plant material has advanced; therefore, 

 changes in the laws were made to have equitable levels of protection, the reason 

 being that the benefits to be derived by conventional plant breeding and from the 

 new biotechnologies are cumulative and not separate. One cannot replace the other. 

 It was desirable that equitable systems of incentive be created for both the new bio- 

 technologies and for the results of plant breeding. Moreover, it was essential that 

 systems of plant variety protection be created or maintained which are complemen- 

 tary to patent protection for biotechnological inventions. 



The United States has signed the revision of the 1991 UPOV Convention which 

 mandates several changes in the U.S. law. The changes are: 



1. Requirement that all member countries, after certain transitional periods, pro- 

 tect varieties of all plant genera and species. 



2. An increase in the term of protection to 20 years. 



3. Extension of the scope of protection to harvested plant parts. 



4. Limitation of the farmers' exemption to prohibit "over-the-fence" sales. 



5. Expansion of the definition of breeders' rights to include the reproduction of the 

 protected variety and sale of a variety derived from the protected one if the varie- 

 ty expresses the "essential characteristics" of the protected variety. Simply stated, 

 the variety which is "essentially derived" from a protected variety cannot be ex- 

 ploited without the authorization of the breeder of the protected variety. Essential 

 derivation includes the selection of a natural or induced mutant, or a 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 

 breeders' rights defined by the UPOV 1991 revisions. For example, if a plant breed- 

 er 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 technol- 

 ogy (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 biotech- 

 nology products would deprive them of sources of germplasm for classical recombi- 

 nation 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 Breed- 

 ing and Genetics section of the PAA encourages holders of potato patents to allow 

 breeders to use the patented varieties in breeding programs directed towards com- 

 mercialization of new varieties, without restrictions and without the threat of in- 

 fringement. The PVPA is the only form of IPR that explicitly provides a research 

 exemption, hence, germplasm exchange. 



