[Ip-health] Updated KEI blog on USTR's TPP draft

Jamie Love james.love at keionline.org
Sat Mar 12 11:11:36 PST 2011


Is the problem that the definition can be used to define what is an
industrial application, rather than what is the standard for utility
before granting a patent in a particular area?

On Sat, Mar 12, 2011 at 1:23 PM, Chan Park <chansoobak at gmail.com> wrote:
> I think it expands it considerably, or at least potentially so. A strict
> application of the industrial applicability requirement can be used to limit
> the patentability of methods of treatment, software, etc. All this stuff is
> patentable in the US under the utility standard.
> A good analysis of the encroachment of the American utility standard in
> Europe and the consequent potential expansion in patentability within the
> context of research tools can be found
> here: http://www.lse.ac.uk/collections/law/wps/WPS2008-06_Thambisetty.pdf
> On 12 Mar 2011, at 6:12 PM, Jamie Love wrote:
>
> Chan,   Does TPP art 8.12 limit or expand the grounds for issuing a patent?
>
> art. 8.12. Each Party shall provide that a claimed invention is
> industrially applicable if it has a
> specific, substantial, and credible utility.
>
>
> On Sat, Mar 12, 2011 at 10:19 AM, Chan Park <chansoobak at gmail.com> wrote:
>
> Also important to point out that the text (art 8.12) redefines the
>
> "industrial applicability" standard into the US "utility" standard, which
>
> could have far-reaching effects on the ability of countries to limit the
>
> patentability of things like methods of treatment, software and business
>
> methods, and upstream research tools.
>
> On Fri, Mar 11, 2011 at 8:49 PM, Krista Cox <krista.l.cox at gmail.com> wrote:
>
> http://keionline.org/node/1091
>
> On 10 March 2011, KEI released the US government draft on the Trans-Pacific
>
> Partnership Agreement (TPP) Intellectual Property Rights Chapter, dated 10
>
> February 2011.  The blog has been updated and now analyzes and highlights
>
> several significant provisions or areas for concern.
>
> These provisions relate to copyright, public health, agriculture, patents,
>
> general enforcement obligations, and consumer protection and competition
>
> safeguards.  They often go beyond that which is currently required by
>
> international law and some are even more stringent than US patent law.
>
> These points include the following:
>
> Copyright
>
> *  Copyright damages shall consider the suggested retail price or other
>
> legitimate measure of value submitted by the right holder.
>
> *  (art. 4.5) The term of protection of a work (including a photographic
>
> work), performance, or phonogram is to be calculated:
>
>     -  on the basis of the life of a natural person, the term shall be not
>
> be not less than the life of the author and 70 years after the author’s
>
> death;
>
>      -  on a basis other than the life of a natural person, the term shall
>
> be: (i) not less than 95 years from the end of the calendar year of the
>
> first authorized publication of the work, performance, or phonogram, or
>
> (ii)
>
> failing such authorized publication within 25 years from the creation of
>
> the
>
> work, performance, or phonogram, not less than 120 years from the end of
>
> the
>
> calendar year of the creation of the work, performance, or phonogram.
>
> *  Would eliminate any possibility of parallel trade in any copyrighted
>
> good. (art. 4.2)
>
> *  Each Party shall establish or maintain a system that provides for
>
> pre-established damages, which shall be available upon the election of the
>
> right holder
>
> *  Requires criminal enforcement for technological measures beyond WIPO
>
> Internet Treaties, even when there is not copyright infringement (art. 5.9)
>
> *  Impose a legal regime of ISP liability beyond the DMCA standards (art.
>
> 16.3)
>
> *  Requires legal incentives for service providers to cooperate with
>
> copyright owners in deterring the unauthorized storage and transmission of
>
> copyrighted materials; (art. 16.3.b.vi.A)
>
> *  Requires identifying internet users for any ISP, going beyond U.S. case
>
> law (art. 16.3.b.xi)
>
> *  Includes the text of the controversial US/KOREA side letter on shutting
>
> down web sites
>
> Public Health
>
> * No mention of Doha Declaration on TRIPS and Public Health or WHO Global
>
> Strategy on Public Health, Innovation and Intellectual Property.
>
> *  Pharmaceutical Products:
>
> *  [Placeholder for provisions related to data protection for
>
> pharmaceutical
>
> products]
>
> *  [Placeholder for provisions related to patent linkage]
>
> *  [Placeholder for provisions related to patent term/data protection
>
> relationship]
>
> *  [Placeholder for definitions of “new pharmaceutical product” and “new
>
> agricultural
>
> product”]
>
> *  [Placeholder for “Bolar” provision] (art. 8.5)
>
> Agriculture
>
> *  Parties agree to sign the International Convention for the Protection of
>
> New Varieties of Plants, 1991
>
> *  10 years of exclusive rights in agricultural chemcial test data (art.
>
> 9.1)
>
> Patents
>
> *  Parties agree to Patent Cooperation Treaty and the Patent Law Treaty
>
> *  Patents shall be available for any new forms, uses, or methods of using
>
> a
>
> known product; and a new form, use, or method of using a known product may
>
> satisfy the criteria for patentability, even if such invention does not
>
> result in the enhancement of the known efficacy of that product. (art. 8.1)
>
> *  Requires patent for second use (art. 8.1)
>
> *  In civil and administrative proceedings involving patents, each Party
>
> shall provide for a rebuttable presumption that a patent is valid, and
>
> shall
>
> provide that each claim of a patent is presumed valid independently of the
>
> validity of the other claims.
>
> *  [Placeholder for provisions concerning patent term
>
> restoration/adjustment] (art. 8.6)
>
> *  Where a Party provides proceedings that permit a third party to oppose
>
> the grant of a patent, a Party shall not make such proceedings available
>
> before the grant of the patent. (art 8.7)
>
> *  USTR proposal in TPP:
>
>     -  Each Party may only exclude from patentability inventions, the
>
> prevention within its territory of the commercial exploitation of which is
>
> necessary to protect ordre public or morality, including to protect human,
>
> animal, or plant life or health or to avoid serious prejudice to the
>
> environment, provided that such exclusion is not made merely because the
>
> exploitation is prohibited by law. (art. 8.3)
>
>     - Which is more restrictive than the text of AUSFTA, which reads:
>
>          > 2. Each Party may only exclude from patentability: (a)
>
> inventions, the prevention within their territory of the commercial
>
> exploitation of which is necessary to protect ordre public or morality,
>
> including to protect human, animal, or plant life or health or to avoid
>
> serious prejudice to the environment, provided that such exclusion is not
>
> made merely because the exploitation is prohibited by law; and (b)
>
> diagnostic, therapeutic, and surgical methods for the treatment of humans
>
> and animals . [emphasis added]
>
> General Enforcement Obligations
>
> *  Each Party shall provide ex officio border measures with respect to
>
> imported, exported, or in-transit merchandise, or merchandise in free trade
>
> zones, that is suspected of being counterfeit or confusingly similar
>
> trademark goods, or pirated copyright goods (art. 14.4)
>
> *  Requires adopting compensation for infringement without actual damages
>
> (art.12.3 and 4)
>
> *  For copyright and trademark, criminal punishment would apply even to
>
> non-for-profit infringement (art. 15.1)
>
> *  In determining damages for infringement of intellectual property rights,
>
> its judicial authorities shall consider, inter alia , the value of the
>
> infringed good or service, measured by the suggested retail price or other
>
> legitimate measure of value submitted by the right holder. (art. 12.3.b)
>
> Consumer Protection and Competition Safeguards
>
> *  Weak, meek or Missing
>
> _______________________________________________
>
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>
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>
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>
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>
>
> --
> James Love.  Knowledge Ecology International
> http://www.keionline.org, +1.202.332.2670, US Mobile: +1.202.361.3040,
> Geneva Mobile: +41.76.413.6584, efax: +1.888.245.3140.
> twitter.com/jamie_love
>
>



-- 
James Love.  Knowledge Ecology International
http://www.keionline.org, +1.202.332.2670, US Mobile: +1.202.361.3040,
Geneva Mobile: +41.76.413.6584, efax: +1.888.245.3140.
twitter.com/jamie_love




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