Here in Washington, D.C., the Trans-Pacific Partnership (TPP) is the latest talk of the town. The TPP is a proposed trade agreement among twelve Asia-Pacific countries concerning a variety of economic policy matters, including intellectual property. TPP’s membership includes several of the U.S.’s largest trading partners, e.g., Canada, Japan, and Mexico. The membership countries reached agreement in early October after years of negotiation. Congress is expected to vote on the agreement in 2016. The full text released on November 15, 2015; the whole of Chapter 18 relates to intellectual property. Overall, it appears that the patent-related provisions in the TPP reflect well-established U.S. patent practice. If ratified, the TPP would likely benefit U.S. companies as it would simplify worldwide patent procurement.
Below is a ten-point summary of the TPP’s patent-related provisions:
New use of a known product is patentable. Article 18.37, paragraph 2 provides that in all states who are parties to the agreement, at least one of the following is patentable: new uses of a known product, new method of a known product, or new processes of using a known product.
Methods of medical treatment may be unpatentable. Based on considerations of public policy and morality, Article 18.37, paragraph 3(a) provides that a party may exclude from patent protection “diagnostic, therapeutic and surgical method for the treatment of human or animals.”
Animals and plants may be unpatentable. Similarly, Article 18.37, paragraphs 3(b) and 4 provide that animals and plants may be excluded from patent protection. However, the language of the text provides a specific caveat: microorganisms apparently do not count as animals. The text also specifically provides that that plant-derived inventions are patentable.
Novelty comes with a one-year grace period. While many non-U.S. jurisdictions’ patent law operates on absolute novelty, Article 18.38 provides a one-year grace period following initial disclosure in all member states. The Article’s language actually resembles AIA 35 U.S.C. § 102(b)(1)(A).
Publication of pending patent applications. Under Article 18.44, all parties are required to publish patent applications 18 months after the filing date or, if priority is claimed, from the earliest priority date.
Public access of patent file history. Article 18.45 provides that the prosecution history of published applications and granted patents are open to the public. The prosecution history contains at a minimum: prior search results, communications from applicants, and art citations from applicants and third parties.
Patent term adjustment. Article 18.46, paragraph 4 contains provisions that are similar in spirit to 35 U.S.C. § 154(b) (Adjustment of Patent Term). The Article guarantees a maximum period of application pendency, which is no more than five years from the filing date, or three years from a request of examination, whichever is longer. Additional delay in examination is compensated by adjusting the patent term.
Patent term extension for pharmaceuticals. Analogously, Article 18.48 provides a bare-minimum equivalent of the Hatch-Waxman Act’s “patent term extension” for pharmaceutical products delayed by marketing approval process. However, the language of the text is rather unspecific, and the availability of such patent term extension is subject to a great number of qualifying conditions.
Presumption of validity for patents. Article 18.72, paragraph 3 gives examined and granted patents a presumption of validity in an enforcement proceeding. In a related footnote, it seems that the burden of proof is placed on the party challenging the validity.
Damages for infringement. As provided by Article 18.74, paragraph 3, TPP parties can order payment of damages from an infringer. However, the Article’s provisions appear to be limited to willful infringement (“an infringer who knowingly, or with reasonable grounds to know, engage in infringing activity”). Paragraph 4 mentions the factors that may be considered in calculating damages, include lost profits, and the market price of the infringe goods or services. Paragraph 10 further provides that the losing party will pay the prevailing party’s court expenses and attorney’s fees.