November 20, 2015

Extensive IP Provisions in the Trans-Pacific Partnership

Arnold & Porter Advisory

The extensive intellectual property (IP) provisions in the Trans-Pacific Partnership (TPP) Agreement address patents, trade secrets, trademarks, geographical indications, domain names, copyrights, Internet service providers (ISPs), as well as other aspects of IP law. Certain of these TPP provisions create commitments among TPP Parties consistent with those provided under US IP law. Others would provide less extensive IP protection in TPP markets than offered in the US, and some provisions would expand the protection currently available in the United States. Where countries have to change their laws to provide enhanced protections, transition periods of various lengths apply, where needed, to come into compliance. The United States has not had to ask for any transition periods.

Key IP provisions include:


  • Patentable Subject Matter (Article 18.37). The TPP's definition of "patentable subject matter" appears to be generally consistent with US law. Accordingly, US companies seeking patents in other TPP countries should find familiar requirements for patentability. Key provisions include the following:
    • "a product or a process, in all fields of technology, provided that the invention is new, involves an inventive step and is capable of industrial application."
    • The TPP clarifies that "inventive step" is the same as "non-obvious" and "capable of industrial application" means "useful" (e.g., as both of these concepts are understood under US patent law).
    • Article 18.37 permits Parties to exclude from patentability inventions that are necessary to "protect human, animal or plant life or health."
    • Animals and plants may also be excluded from patentability, but microorganisms may not.
  • Grace Period for Prior Art (Article 18.38). The TPP shelters certain public disclosures from creating a bar to patentability, similar to what US law provides. This is a progressive measure that allows academics and others to publish their findings for public benefit without precluding patentability.
    • The TPP provision provides that a member nation shall not use "public disclosure" prior art to determine whether an invention is "novel" or has "an inventive step," if the public disclosure was made by the applicant within 12 months before filing the patent application.
  • Patent Term Adjustment Due to Patent Office Delays (Article 18.46). The TPP includes a requirement that a "Party shall provide the means to, and at the request of the patent owner shall, adjust the term of the patent" if there are "unreasonable delays" in the issuance of a patent by the Party. While US law provides for patent term adjustment in these circumstances, this provision offers important protections to companies applying for patents in other TPP countries.
    • Article 18.46 states that "an unreasonable delay at least shall include a delay in the issuance of a patent of more than five years from the date of filing," which leaves open the possibility that there may be other types of "unreasonable delay" that could be asserted.
    • Article 18.46 provides several exceptions to the availability of the adjustment of a patent's term, including delays for "periods of time that are attributable to the patent applicant."
  • Patent Term Adjustment Due to Unreasonable Curtailment for Marketing Approval of Pharmaceutical Products (Article 18.48). The TPP requires Parties to "make available an adjustment of the patent term to compensate the patent owner for unreasonable curtailment of the effective patent term as a result of the marketing approval process." This is an important corrective, given the problems with long delays in certain countries' domestic approval processes.
    • Article 18.48 also states that a Party may adopt procedures to expedite marketing approval for pharmaceuticals, with the goal of avoiding the unreasonable curtailment of the term of a patent for a pharmaceutical product.

Trade Secrets

  • Chapter 18 of the TPP discusses trade secrets in Article 18.78, which is in the "Enforcement" section (Section "I").
  • Article 18.78 adopts a generally accepted definition of trade secrets from Article 39.2 of the TRIPS Agreement, which also is consistent with the Uniform Trade Secrets Act, adopted by 47 states in the United States, as well as the District of Columbia, Puerto Rico, and the US Virgin Islands.
  • Each Party must provide a legal framework to protect against the unauthorized disclosure, acquisition, or use of trade secrets "in a manner contrary to honest commercial practices," which includes breach of contract, breach of confidence, and inducement to breach.
  • In a first for a US trade agreement, the TPP requires the provision of limited criminal procedures and penalties for the unauthorized access to, and misappropriation and fraudulent disclosure of, trade secrets.
  • The Agreement is silent with respect to civil remedies related to trade secrets.

Geographical Indications (GIs)

GIs, protected widely in Europe, are designations used on products with a specific geographical origin that have characteristics attributable to that origin. Examples include "Parma Ham" for prosciutto manufactured in the Parma region of Italy according to certain Italian laws, and "Roquefort" for a kind of cheese from the Roquefort caves in France. Both of these marks are also registered in the United States as "certification marks," under US trademark law. These marks certify the qualities and characteristics of certain products – and must be held by someone other than the producer of the product.

  • The TPP potentially contemplates broader protection for GIs than that generally afforded under US trademark law.
  • Parties "may" use a variety of procedures to recognize GIs as protectable. In this country, GIs have generally received protection only if they are registrable as certification marks, collective marks (owned by an organization and used by members to identify themselves with a certain geographic origin), or geographic trademarks.
  • Whatever procedures the Parties use, the TPP requires them to include a means to challenge applications for GI protection and cancel the GI protection.
  • In addition, under the TPP,  trademark owner could successfully challenge the establishment of a new GI if it would cause confusion with a pre-existing trademark right.
  • Article 18.31 also provides for opposition and cancellation proceedings for GIs on the basis that the GI is comprised of a generic term.

Domain Names

  • The TPP protects trademark owners from unauthorized use of their trademarks in domain names. The TPP requires the Parties to adopt a domain name dispute resolution system for their own country-code top level domains (ccTLDs), such as ".fr" for France, that is to be "modelled along the same lines as ICANN's Uniform Domain Name Dispute Resolution Policy" (UDRP). Some critics have expressed concern that this element of the TPP will prevent individual countries from adopting dispute resolution mechanisms tailored to the particular needs of their ccTLDs. In the United States, however, the usTLD dispute resolution policy (applicable to domain names with the top level domain ".us") is already modeled closely after the UDRP.
  • In addition, the TPP could be beneficial to US trademark owners because it should ensure more consistency in domain name challenge procedures, especially in countries that have had few procedures protecting trademark owners making a domain name challenge.

General Trademark Provisions

In addition to provisions regarding geographical indications and domain names, the TPP contemplates traditional trademark protection similar to US trademark law.

  • Article 18.18 sets forth the types of signs that are registrable and includes those that are not visually perceptible, including sound and scent marks.
  • Article 18.19 requires Parties to protect collective and certification marks. Parties need not treat these marks, or geographical indications, as separate legal categories from trademarks.
  • Article 18.20 confirms that trademark owners have the right to prevent third-party use of identical or similar signs with respect to related goods. A likelihood of confusion is presumed when an identical sign is used for identical goods. This article also protects trademark owners vis a vis geographical indications that are likely to cause confusion.
  • Article 18.21 contemplates limited exceptions to trademark rights. Notably, the provision makes express reference to fair use but does not address the metes and bounds of this, or any other, exception.
  • Well-known trademarks are addressed in Article 18.22. It ensures there will be no unreasonable barriers to establishing a mark as well known and stresses that "appropriate measures" must be in place for the refusal or cancellation of signs that infringe well-known marks.
  • Subsequent provisions address procedural aspects of trademark examination, electronic trademark application and information systems and trademark classification systems.
  • Article 18.27 sets the initial registration and each renewal trademark term as no less than 10 years, consistent with US law.


Performance Rights in Copyrights (Article 18.62, "Related Rights")

  • In addition to protections for fixed performances, this Article confers upon "performers" the exclusive right to authorize or prevent "broadcasting and communication to the public of their unfixed performances" (emphasis added).
  • On first glance, this right appears to expand U.S. copyright law, because the U.S. Copyright Act protects only those works "fixed in any tangible means of expression." 17 U.S.C. §102(a).
  • Yet, rights in an unfixed work may be accorded in the United States by the common law of copyright. According to a noted authority, protection of unfixed works is the sole area of copyright not pre-empted by the 1976 Copyright Act. Whether or not such protection applies to unfixed works is a matter of state law. For example, California expressly protects "any original work of authorship that is not fixed in any tangible medium of expression ...." Cal. Civ. Code, § 980(a)(1) (emphasis added). At the end of the day, this TPP provision may provide more certainty regarding this right for US performers.

Duration of Copyright (Article 18.63)

  • The TPP provides the same copyright duration as US law for natural authors, i.e., "life plus 70 years." But this is not true for all TPP Parties.
  • For some TPP Parties, Article 18.63 increases the copyright protections beyond current domestic law. Accordingly, the TPP would expand the protection of US copyrighted works in those jurisdictions.
  • This change may be controversial, since it prolongs the period until copyrighted works are in the public domain, available to all to exploit freely.

ISP Safe Harbor Provisions (Articles 18.81-18.82)

  • This Article creates a "safe harbor" for ISPs that closely tracks the safe harbor provisions in the Digital Millennium Copyright Act (DMCA), codified at 17 U.S.C. § 512. Like the DMCA safe-harbor provisions, this section of the TPP attempts to provide reasonable protection from copyright liability to qualifying ISPs while simultaneously assuring that copyright owners have recourse regarding infringing on-line content.
  • Like the DMCA, the TPP's safe harbor provisions would insulate ISPs when they store content on-line at the direction of a user, or link to third-party content (even if not at the direction of a user), so long as the ISPs create systems to "expeditiously remove or disable access to material residing on their networks upon obtaining actual knowledge of the copyright infringement" (i.e., a takedown request system).
  • Note that while the establishment of a takedown system is mandatory under the TPP, the creation of a counter-notification system whereby Internet users can challenge takedown requests involving the Internet user's content is not. This may result in some TPP countries adopting safe harbor regimes that more strongly favor copyright owners than does the American system under the DMCA, which already provides counter-notification procedures.

Technological Protection Measures (Article 18.68)

  • Copyright owners sometimes utilize software that acts as a digital "lock" to protect their works from unauthorized copying. For instance, a consumer who purchases a new PC video game may be required to input a one-time-use CD key before installing, or may be limited in the number of times she can install a copy of the game on her computer. This Article provides for an "anti-circumvention" rule similar to the one created by the DMCA, codified at 17 U.S.C. § 1201, to penalize individuals who tamper with these digital locks, or help others to do so.
  • Like the DMCA, this Article requires member states to institute civil and criminal penalties for individuals who themselves circumvent "effective technological measures" used by authors to protect their works, or who sell products or services capable of doing the same.
  • In addition, similar to the DMCA, Article 18.68 provides that Parties can create a legislative or administrative process for creating exceptions to the anti-circumvention rule.
  • Note that Article 18.68 imposes liability on those who circumvent effective technological measures when they "knowingly or have reasonable grounds to know" that they are doing so.

For discussion of other aspects of the TPP, please see the Arnold & Porter Advisory on The Trans-Pacific Partnership Agreement Would Affect Diverse Sectors of the Global Economy, which addresses the timeline for the TPP entering into force, the US approval process, the US timeline for approval, the potential accession of new parties, and the implications of TPP provisions relating to: antitrust/competition policy; anti-corruption; improved efficiency in trade, customs rules of origin, and cumulation; e-commerce; financial services; government procurement; intellectual property (patents, trade secrets, geographical indications, domain name, and copyright); pharmaceuticals and medical devices; telecommunications; and investor-state dispute settlement (ISDS).

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