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

Ante ante at ffii.org
Sat Mar 12 17:24:26 PST 2011



Erik Hjalmar Josefsson <erik.hjalmar.josefsson at gmail.com> wrote

>Which leads to what I wanted to say regarding art. 8.12 :-), I don't
>think it matters much what patent law says - it's auxiliary
>institutions
>who decide in which direction the legal-linguistic exercises as
>exemplified above should go.

That is in the situation that the patent office wants to enlarge patentability, and isn't corrected by an independent court.

Here we have the situation that a country may not like to enlarge patentability, but can be forced to do that with a definition in an FTA.

Ante


>
>Here's an old masterpiece on such exercises:
>
>    *Moses and Patentability - The Ten Exclusions vs Stealing with a
>    further Ethical Effect*
>    http://eupat.ffii.org/analyse/epc52/moses/
>
>Enjoy!
>
>//Erik
>
>*) Dispositionsprogramm in Germany
>http://eupat.ffii.org/papri/bgh-dispo76/index.en.html
>**) The Pettersson Patent in Sweden (Queueing system, T1002/92)
>http://www.sslug.dk/patent/eudirektiv/sv/sslug02-92sv.html
>http://www.ffii.se/erik/misc/pettersson/
>
>On 03/12/2011 08:11 PM, Jamie Love wrote:
>> 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
>>>
>>> _______________________________________________
>>>
>>> Ip-health mailing list
>>>
>>> Ip-health at lists.keionline.org
>>>
>>>
>http://lists.keionline.org/mailman/listinfo/ip-health_lists.keionline.org
>>>
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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
>>>
>>>
>>>     
>>
>>
>>   
>
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