35 



REVISING IPR FOR POTATO 



At this time, potato cultivars can be protected as utility patents under the Patent 

 Act in the United States and in Canada under the Plant Breeders' Rights Act 

 (PBRA). Those are not equivalent in the level of protection nor do they have similar 

 standards for documentation and release. The Canadian PBRA provides the re- 

 quired varietal protection, enables the breeder to collect royalties, and recognizes 

 the free availability of germplasm for use in further crossing. Their IPR for potatoes 

 were developed to be in alignment with the 1978 UPOV treaty. The PVPA is the 

 corresponding legislation in the United States to provide breeders' rights similar to 

 Canada. If potatoes could be protected through the PVPA we would have essentially 

 equivalent systems of varietal protection in North America. The PAA and NPC sup- 

 port the inclusion of the potato in the PVPA legislation that is currently being re- 

 vised to be in alignment with the 1991 UPOV Convention. 



CONCLUSION 



We have IPR for potato cultivars today, however utility patents are not an ade- 

 quate form of protection in most cases. Besides their cost to submit a claim, there is 

 no research exemption clause; therefore, by default utility patents sequester germ- 

 plasm exchange. The inclusion of the potato in the PPA is not the best solution 

 either for potato breeding. It does not provide an adequate level of protection (lacks 

 the "essential derivation" concept), requires lawyers for submission of a claim, and 

 has no research exemption. 



The PAA and NPC support the form of intellectual property rights for plants out- 

 lined in the 1991 UPOV Convention. The PAA and NPC also advocate the inclusion 

 of the potato in the PVPA under the revisions required by the 1991 UPOV treaty. 

 This form of protection does not require the use of lawyers to obtain protection, is 

 less costly and affords an adequate level of breeders' rights while explicitly legislat- 

 ing a research exemption for breeding. If potatoes are included in the PVPA the 

 potato breeders then have adequate protection for potato germplasm which is com- 

 parable to other UPOV countries which conduct potato breeding. Moreover, we will 

 have a form of protection that puts us on par with biotechnologists means to protect 

 their product, which should promote germplasm exchange between these two 

 groups. 



Appendix 



When we, the potato breeders, use the term intellectual property we are usually 

 referring to a new potato cultivar. Intellectual property rights (IPR) is a concept 

 that has guaranteed rights under the law which recognizes the ownership rights of 

 a specific cultivar. If the breeder discloses the invention to the public, then the Gov- 

 ernment will grant the breeder time-limited rights to exclusive use and sale of the 

 cultivar. It is with the hope that this information can then be used for further ad- 

 vance of science. 



What is the rationale of IPR for plant material? The development of novel plants 

 can be expensive and is a long-term investment. The U.S. Patenting Act of 1790 was 

 created for the purpose of rewarding inventors by protecting their invention. The 

 philosophy is that if there is no protection there would be little incentive to develop 

 new products. The discussion below describes the various forms of protection we 

 have available for plant varieties in the United States. 



PLANT PATENTS 



The PPA of 1930 provided protection for asexually propagated varieties. Before 

 the passage of the PPA in 1930, it was the common perception that plants and other 

 living organisms were not eligible for plant protection because living organisms 

 were products of nature. In the drive to pass the PPA, advocates for the PPA point- 

 ed to the great agricultural and horticultural contributions to society by plant 

 breeders. They wanted to remove the existing discrimination between plant breeder 

 and industrial inventors. Interestingly, Luther Burbank, breeder of the Burbank 

 potato, was a noted advocate of plant patents. 



A plant patent may be granted to anyone who invents or discovers and asexually 

 reproduces a variety which is distinct, novel and nonobvious. In practice, the appli- 

 cation of the criterion of nonobviousness to plants seems to be linked to distinctive- 

 ness. For example, the candidate variety must be distinct by something more than a 

 minor (cosmetic) characteristic. To obtain a plant patent the variety must be de- 

 scribed as completely as reasonably possible and only one claim is permitted per va- 

 riety. A plant patent application also requires a varietal name for the plant variety 



