Trans-pacific intellectual property

By Jessica Alm

The recently negotiated Trans Pacific Partnership Agreement contains provisions that would dramatically impact intellectual property in the United States and elsewhere if ratified.

The Trans-Pacific Partnership (TPP)—a favored talking point among our presidential hopefuls—is an international trade agreement between twelve nations. The agreement was signed earlier this year, but is not yet ratified in most member countries including the United States. Negotiations took place over seven years and resulted in thirty dense chapters of provisions—some of which are mandatory, while others are permissive. Chapter 18 of the agreement is dedicated exclusively to intellectual property protections. These IP-specific provisions provide that the “protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare.” Reactions to the IP provisions span a wide range. Some hail the TPP as a welcome measure for protecting international rights of IP holders, while others condemn the provisions as a death knell for innovation and creativity.

Chapter 18 of the TPP presents one of the most sweeping intellectual property treaties. However, the provisions do not appear aimed at amending U.S. law. In fact, much of the IP chapter effectively requires non-U.S. countries to align their intellectual property laws with those already in practice the U.S. For example, the copyright provisions of the TPP require countries to adopt a term of life of the author plus seventy years—the current U.S. copyright term—and mirror some provisions of the Digital Millennium Copyright Act. While these provisions may represent a drastic expansion of many member nations’ current laws, they appear to reflect the status quo in the U.S. Below is a listing of some of the major IP provisions of the TPP.

Trademark

  • Requires that sound marks, scent marks, collective marks, certification marks, and geographical indications are registrable as trademarks.  (Art. 18.18-18.20)
  • Requires that registered trademark holders be given an “exclusive right to prevent third parties” from using the mark or similar marks for related goods or services without consent, where such use “would result in a likelihood of confusion.” (Art. 18.20)
  • Permits the provision of trademark exceptions, such as fair use. Notably, this provision—codified law in the U.S.—is not required under the TPP. (Art. 18.21)
  • Requires provision of an electronic trademark application and maintenance system, including “an online database of trademark applications and of registered marks.” (Art. 18.24)
  • Requires initial terms and renewals terms of no less than 10 years. (Art. 18.26)
  • Requires provision of a system for examination and registration of trademarks, including providing “an opportunity to oppose the registration of a trademark or to seek cancellation of a trademark.” (Art. 18.23)

Patent

  • Requires that member countries provide patent rights for inventions that are new, involve an inventive step, and are “capable of industrial application.” (Art. 18.37)
  • Publications and disclosures made within 12 months of the filing date by the patent applicant, or a person who obtained the information from the patent applicant, are not to be considered prior art to the patent application.   This provision is particularly similar to language of the U.S. America Invents Act. (Art. 18.38)
  • Requires an effective first-to-file patent system, wherein the first inventor to file an application for an invention is awarded the patent. (Art. 18.42)
  • Requires publication of pending patent applications, as well as publicly accessible patent prosecution files. (Art. 18.44-18.45)
  • Requires extension of patent term for delays caused by prosecution time or, for pharmaceutical patents, marketing approval time. (Art. 18.46, 18.48)
  • Where safety or efficacy data must be disclosed for marketing approval, requires provision of 10 years of market exclusivity for agricultural products and 5 years of market exclusivity for pharmaceutical products. Notably, these market exclusivity terms are shorter than those available under U.S. law. (Art. 18.47, 18.50)
  • Requires certain provisions for approval of generic drugs. (Art. 18.53)

Copyright

  • Requires a copyright term of life of the author, plus 70 years. (Art. 18.63)
  • While not explicitly requiring exceptions such as fair use, the language states, “Each party shall endeavor to achieve an appropriate balance . . . giving due consideration to legitimate purposes such as, but not limited to: criticism; comment; news reporting; teaching, scholarship research, and other similar purposes; and facilitating access to published works for persons who are blind, visually impaired or otherwise disabled.” (Art. 18.66)
  • Requires criminal penalties for circumvention of technological protection measures if the circumvention is willful and for the purpose of commercial advantage or financial gain. Such criminal liability is irrespective of commission of copyright infringement of the underlying work. This is similar to the U.S. Digital Millennium Copyright Act. (Art. 18.68)
  • Requires criminal penalties for copyright infringement, including for acts that are not necessarily for financial gain or commercial advantage, but that have a “substantial prejudicial impact on the interests of the copyright or related rights holder in relation to the marketplace.” This could potentially mean an expansion of current criminal penalties under U.S. law. (Art. 18.77)
  • Requires a safe harbor provision for internet service providers, consistent with the U.S. Digital Millennium Copyright Act. (Art. 18.82)

Trade Secret

  • Requires both civil and criminal penalties for trade secrets theft. The U.S. already has criminal penalties via the Economic Espionage Act, and civil remedies in the form of state laws and the recently enacted Defend Trade Secrets Act. In many ways, the Defend Trade Secrets Act mirrors provisions of the TPP. (Art. 18.78)

Importantly, the TPP is not yet in effect for any member countries. If ratified by all twelve nations by February 4, 2018, the agreement will become effective sixty days after the twelfth nation ratifies.  Otherwise, the agreement will become effective when ratified by at least six countries that account for at least 85% of the group’s collective Gross Domestic Product. (Art. 30.5). Although, some countries are permitted post-enactment transition periods, ranging from eighteen months to ten years, for certain IP provisions.  (Art. 18.83).

About the author

Jessica Alm
Jessica is a member of Robin Kaplan LLP’s intellectual property and technology practice. Based in Minneapolis, her practice focuses on intellectual property and technology litigation. Jessica leverages her technical background and broad IP experience to help her clients navigate every stage of the litigation process, from pre-suit evaluation to trial. She is reachable at jalm[at]robinskaplan.com.