After many years of negotiations and multiple rounds of final negotiations, the final text of the Trans-Pacific Partnership (TPP) agreement was released to the public on 5 November 2015.
The TPP Intellectual Property (IP) Chapter imposes regional standards for IP protection and enforcement across a range of rights, including patents, copyright, trade marks and trade secrets, and will benefit businesses operating in the Asia-Pacific region by ensuring greater consistency and transparency across the various signatory jurisdictions.
This article provides a high-level overview of the key provisions of the TPP in respect of each of these IP rights. A more detailed analysis on the impact of the TPP on Australia’s IP laws is available here. An overview of the TPP provisions that may impact the pharmaceutical industry within the TPP-region is here, and a more detailed analysis of the impact of the TPP on the Australian pharmaceutical landscape is available here.
In the area of patents, the TPP seeks to create greater regional consistency by establishing standards for the subject matter and duration of patents, including:
- Patents for inventions: signatory states must make patents available for any inventions (both products and processes) which are new, involve an inventive step and are capable of industrial application.
- Exclusions from patentability: signatory states may exclude from patentability inventions the commercial exploitation of which is contrary to ordre public or morality, as well as:
- diagnostic, therapeutic and surgical methods for the treatment of humans or animals; and
- animals and essentially biological processes for the production of plants or animals.
- Secondary use patents: the TPP also requires signatory states to confirm that patents are available for either ‘new uses of a known product, new methods of using a known product, or new processes of using a known product’.
- Patent term extensions on the basis of delay: where there are unreasonable delays in a signatory state’s issuance of patents, that signatory state is required to (at the request of the patent owner) compensate for the delay by adjusting the term of the patent. Similarly, adjustments to patent terms are also required to compensate for unreasonable curtailments resulting from the marketing approvals process.
- Grace period: for the purposes of determining novelty or inventive step, signatory states are required to provide a 12 month grace period for public disclosures prior to filing a patent application.
In the context of copyright, the stated aims of the TPP are to protect the interests of rights holders by harmonising regional copyright protections, while also ensuring legitimate providers of internet services are not exposed to excessive liability for copyright infringement. Some of the key provisions relating to copyright are:
- Uniform Copyright term: the TPP imposes a standard minimum copyright term of 70 years. For published works, this is calculated from the date of publication, whereas for works based on the life of a natural person, it is calculated from the date of the author’s death.
- Rights of communication to the public, distribution and related rights: the TPP also imposes consistent standards by requiring all signatory states to provide for an author’s exclusive right to communicate their work to the public, to distribute their work and their entitlement to related rights such as broadcasting and fixation of performances.
- Internet Service Provider (ISP) liability: signatory states must restrict the liability of ISPs for copyright infringement which takes place using systems or networks which they operate. These protections are complemented by requiring signatories to provide legal incentives for ISPs to cooperate with copyright owners to deter copyright infringement from occurring.
- Stronger and more consistent criminal enforcement provisions across the region, including specific film industry protections: for criminal sanctions for willful acts of piracy on a commercial scale, including the importation or exportation of pirated goods, and greater regional protection for the film industry by requiring signatory states to adopt or maintain criminal penalties and procedures for recording a film in the theatre.
In relation to trade marks, the TPP aims to make it easier for companies operating across the Asia-Pacific region to ‘search, register, and protect their trademarks’ by harmonising the application and operation of these processes. Specifically, the TPP requires signatory states to provide:
- Trade mark term: the TPP imposes a minimum term of 10 years for the initial registration and each renewal of a registration of a trademark.
- Transparent examination and registration systems: the TPP imposes minimum requirements to ensure all signatory states’ procedures for refusing, cancelling or opposing a trade mark application, operate transparently.
- Electronic trade marks system: signatory states must also provide an electronic system to apply for and maintain trade marks, as well as a publicly available online database listing current trade mark applications and registrations.
- Trade marks for collective and certification marks: signatory states must allow for the protection of collective and certification marks, which will be particularly beneficial to small and medium sized export enterprises.
Combating copyright and trade mark infringement
In relation to both copyright and trade marks, the TPP requires signatory states to implement a range of laws to combat the importation and use of counterfeit and pirated goods, and provide adequate civil remedies for copyright and trade mark infringement including:
- Expanded offences for counterfeit or pirated labels and packaging: signatory states are required to impose criminal procedures and penalties for the importation or domestic use of a label or packaging to which a mark (which is identical to, or cannot be distinguished from, a registered mark) has been applied without authorisation.
- Express forfeiture power for counterfeit or pirated goods: signatories are also required to ensure that their judicial authorities have the power to order forfeiture or destruction of all counterfeit trade mark goods or pirated copyright goods, as well as any materials or implements predominantly used their creation and any labels or packaging to which they have been applied.
- Civil remedies for copyright and trade mark infringement: Signatory states must, in civil proceedings, provide adequate damages for copyright or trade mark infringement, as well as providing a system for either additional damages or pre-established damages.
In relation to trade secrets, the TPP aims to assist businesses to combat trade secret theft by requiring signatory states to ensure they have effective legal mechanisms to prevent trade secrets lawfully in their control from being misappropriated by others, including state-owned enterprises.
In addition, signatory states are also required to impose criminal procedures and penalties for either unauthorised and wilful access to trade secrets held in a computer system, unauthorised and wilful misappropriation of a trade secret by means of a computer system, or the fraudulent or unauthorised and wilful disclosure of a trade secret, including by means of a computer system.