7 October, 2015
After many years of negotiations and multiple rounds of final negotiations, the Trans-Pacific Partnership (TPP) has finally been concluded. While specific details of the agreement are not expected to be released for some time, some limited information about how the agreement will affect intellectual property laws in Australia has been released.
We now know that Australia successfully resisted the United States’ push to include an extended data exclusivity period for biological pharmaceutical products. US trade representative Michael Froman has said that the deal will offer a minimum of 5 years’ protection, as well as some ‘minimum time for other measures’.1 While it remains unclear exactly what these other measures will include, it would appear that Australia’s current data exclusivity laws for biological products will continue to apply. However, it will not be known until the final text of the TPP is released whether the ‘minimum time for other measures’ includes a previous US proposal to extend data protection to new data submitted in relation to previously approved pharmaceutical products (eg pharmacovigilance). The proposed period of protection for this class of data was limited to 3 years.
We now also know that the agreement requires all signatories to provide legal means to prevent misappropriation of trade secrets, and establish criminal penalties for theft of trade secrets including by way of computer systems (eg so-called ‘cyber-theft’). Although it may be arguable that existing Australian offences cover such conduct, it is possible that a specific new criminal offence will be required to put the situation beyond doubt.
Little further detail about the agreed text has been released, however, a number of successive drafts of the Intellectual Property chapter2 have previously been leaked on WikiLeaks. These leaks contain proposals (discussed below) that, if included in the final agreement, would require some legislative and policy changes in Australia.
Patentable subject matter expansion
The most recent draft TPP included an obligation for member states to allow for patents concerning plants and animals. Although this is unlikely to impact Australia’s patent laws,3 since the majority of other countries have chosen to exclude plants and animals from their national patent laws,4 such an obligation would likely lead to an expansion of patentable subject matter in a number of TPP member states.
Copyright term extension for certain types of works
The term of copyright in Australia for films and sound recordings is currently 70 years from the year in which the film or sound recording is first published.5 The draft TPP contains proposals that would, if adopted in the final agreement, extend the term of copyright protection up to 95 years from the date of first publication.
The extension of the term of copyright for other types of works6 (currently life of the author plus 70 years) had been opposed by a number of countries, including the US and Australia.
Pre-established damages for trade mark & copyright infringement
The US has previously proposed the introduction of pre-established damages for copyright and trade mark infringement. The value of the pre-established damages would, presumably, be prescribed in legislation or regulations and be available to a rights-holder, without any evidence of actual loss, upon a finding of infringement. This would be an alternative, at the option of the rights-holder, to common law damages (which requires evidence of actual loss).
If pre-established damages are prescribed at a sufficiently high level they have the potential to deter infringement in much the same way as fines are used to deter infringement of the road rules. Pre-established damages may also make lower-level IP infringement action more cost effective if their value is higher than what the rights-holder would otherwise be entitled to under common law damages.
Trade mark counterfeiting offences: labels & packaging
Australia’s trade mark legislation already criminalises various acts constituting trade mark counterfeiting (eg falsely applying a registered trade mark and falsifying a registered trade mark). The draft TPP contained a proposal that would require the expansion of these counterfeiting offences to include the wilful importing of labels and packaging to which a registered trade mark has been applied and which are intended to be used on goods or in relation to services for which the trade mark is registered.
If this proposal has been agreed, it may require the introduction of a specific labels and packaging offence, potentially strengthening Australia’s trade mark counterfeiting offences.
Endnotes:
- James Glenday, Australian Broadcasting Corporation, 6 October 2015.
- See: Secret Trans-Pacific Partnership Agreement (TPP) – IP Chapter and Updated Secret Trans-Pacific Partnership Agreement (TPP) – IP Chapter (second publication). See also the leaked draft Annex on Transparency and Procedural fairness for Pharmaceutical Products and Medical Devices.
- Australia’s patent law currently allows for plant and animal pants, with the exception of patents for humans and the biological processes for their reproduction. This exclusion is consistent with Australia’s existing international intellectual property obligations, including TRIPS, and so it is unlikely that Australia will need to repeal this exclusion.
- Australian Centre for Intellectual Property in Agriculture, 'Plant Patent Law and Practice: Australia, North America and Europe. Discussion Paper' 2011 at 7.
- The same is true of literary, musical and dramatic works that remain unpublished until 70 years after the death of the author of those works.
- Artistic works and photographs, as well as published literary, dramatic and musical works.
For further information, please contact:
Donald Robertson, Partner, Herbert Smith Freehills
donald.robertson@hsf.com
