Trans-Pacific Partnership: Full Text Made Publicly Available

The full text of the Trans-Pacific Partnership Agreement (TPP) was recently made available online by the New Zealand Ministry of Foreign Affairs & Trade (New Zealand acts as Depositary for the TPP under Article 77 of the Vienna Convention on the Law of Treaties).

The TPP is an international free trade agreement concluded, though yet to be signed, by 12 countries (Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States of America and Vietnam; together, Parties).

Canada’s previous government anticipated that the TPP would be ratified by Canada on or before January 2018.  However, with the recent election of a new Canadian government, this timeline may be revised.

The TPP addresses a range of trade barriers and includes provisions intended to harmonize the Parties’ respective intellectual property (IP) regimes.  E-TIPS® newsletter briefly reported on the previously leaked version of the TPP’s draft IP provisions in October.

The intellectual property chapter of the TPP contains a number of noteworthy provisions.  While most of these provisions would have a greater impact on the IP regimes of the Asian and South American Parties, some provisions would significantly impact Canadian law.

General Provisions

In an effort to promote cooperation and enhance the exchange of information among the Parties’ respective intellectual property offices, each Party agreed to endeavour to make information available online for trade-mark, patent and industrial design applications and registrations. 

In addition, there are several provisions directed at (1) the seizure of imported and exported counterfeit goods, (2) the protection of trade secrets, and (3) requiring Internet Service Providers (ISPs) to remove or disable access to material that infringes intellectual property rights.

Copyright

The TPP requires Parties to provide a minimum term of copyright protection of the life of the author plus 70 years.  This is a substantial increase from the existing term of protection provided under section 6 of Canada’s Copyright Act, which is the life of the author plus 50 years.

Other provisions focus on the protection of performers’ rights, as well as the rights of sound recording producers.

Trade-mark

Many of the provisions of the TPP relating to trade-marks are consistent with current or soon to be implemented Canadian laws and practices.  For example, any requirement for a trade-mark to be visually perceptible is expressly prohibited under the TPP.  The TPP also requires that certain procedural provisions be made available relating to geographical indications.  In addition, each Party must use the Nice Classification system for goods and services.

Interestingly, with respect to infringement of registered marks, the TPP requires that a likelihood of confusion be presumed in the case that an identical mark for identical goods or services is used by a third party.

Patent

The TPP introduces a patent adjustment term for “unreasonable delays” in the issuance of the patent.  This concept has existed in the U.S., but not in Canada, since 1999.  Although the chosen means of term adjustment is flexible under the TPP, an “unreasonable delay” will include a delay in the issuance of a patent of more than 5 years from the filing date, or 3 years after examination has been requested, whichever is later, excluding time attributable to the applicant and time not directly attributable to the granting authority.

Additionally, for the purposes of assessing novelty and non-obviousness, each Party has agreed to recognize a 12 month grace period with respect to public disclosures made by the applicant.  This conforms to existing U.S. and Canadian law.

Pharmaceuticals

Under the TPP, pharmaceutical patents would be subject to the patent term adjustment provision described above.  However, pharmaceutical patent terms can also be extended for “unreasonable curtailment of the effective patent term” as a result of the market approval process required for pharmaceuticals.  Notably, Canada already agreed to such a patent adjustment term for pharmaceuticals in the Comprehensive Economic and Trade Agreement with the EU (CETA).

Further, the TPP also requires a minimum 5 year data exclusivity period for information submitted as part of the marketing approval process for new pharmaceutical products.  For biologics, the TPP provides the Parties with a choice of (i) providing effective market protection for a period of at least 8 years, or (ii) providing effective market protection for at least 5 years in addition to other protective measures.  These exclusivity periods are consistent with Canada’s current 8 year data exclusivity period for pharmaceuticals and biologics.

Controversy and Criticisms

Some commentators have been critical of the TPP.

Some argue that the TPP will entrench undesirable aspects of US copyright law into Canadian law.  One example is the enforcement provisions of the US Digital Millennium Copyright Act of 1998, which may increase the cost of enforcement in Canada as well as expose ISPs to potential liability for IP infringement.  Another example is the extension of the protection term for copyright to the life of the author plus 70 years.  Analysts have estimated that this change may cost Canadians hundreds of millions of dollars annually that would otherwise have been avoided if the books, music and films had instead entered the public domain earlier.

Others commentators have expressed a more general concern about the extent that the TPP adopts US intellectual property laws.  The cost of harmonization will be inflicted disproportionately on the other Parties.