[Ip-health] NZ official TPP Factsheet on Intellectual-Property

Jamie Love james.love at keionline.org
Thu Oct 8 06:01:09 PDT 2015

This is what NZ's analysis of the IP provisions are:



Disclaimer: This document is for information purposes only, and does not
constitute legal advice.

trans-pacific partnership intellectual property FACT SHEET


TPP contains an Intellectual property chapter that will establish a common
regional framework for intellectual property.

The chapter will harmonise intellectual property standards across the TPP
region. Consistent enforcement standards will help New Zealand businesses
protect their intellectual property in TPP markets. Rules on ‘geographical
indications’ will also establish processes that should help preserve access
for New Zealand exports that use generic names.

Most provisions of the chapter are consistent with New Zealand’s existing
intellectual property regime. But some provisions require New Zealand to
make legislative changes before we can ratify the agreement. To limit the
potential impact of many of these changes, New Zealand has negotiated
flexible approaches to implementation. Exceptions and limitations have also
been included. However, the changes required by the chapter will still
entail some costs for New Zealand. These need to be considered against the
benefits of the agreement as a whole.

Objectives and principles

New Zealand is a Party to the World Trade Organization Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS). TPP’s
Intellectual Property chapter incorporates important objectives and
principles from TRIPS. For example, TPP Parties may take measures to
protect public health and nutrition, promote the public interest in sectors
of vital importance to their socio-economic and technological development,
and prevent the abuse of intellectual property rights by right holders.


New Zealand law currently protects copyright for 50 years1. Under TPP, New
Zealand would be required to extend the copyright term to 70 years. The
extension applies to works that are still within their current 50 year term
of protection, but not those that have already fallen into the public
domain. New Zealand copyright owners (including authors, musicians, artists
and filmmakers) will in some cases benefit from a 70 year copyright term in
TPP countries, but the benefits are likely to be modest. Extending the
copyright term also means New Zealand consumers and businesses will forego
savings they otherwise would have made from books, music and films coming
off copyright earlier.

The net cost of extending New Zealand’s copyright term from 50 to 70 years
will be small to begin with and increase gradually over 20 years, reaching
a relatively constant level after that. Over the very long term, including
the initial 20-year period, the average annual cost is estimated to be
around $55 million.

TPP will require New Zealand to provide stronger protection to
technological protection measures (TPMs) – digital ‘locks’ that protect
copyright works. The main new requirement is to provide civil and criminal
remedies against people breaking TPMs. While TPP also includes obligations
to prevent selling of devices and services that enable the breaking of
TPMs, New Zealand already has rules in this area.

The TPM provisions will not require New Zealand to criminalise uses of
copyright works that are currently legitimate under New Zealand law. This
is because New Zealand has negotiated an exceptions provision to ensure
people can continue to break TPMs for legitimate purposes. These exceptions
are not set out in TPP – the Government will determine what they are during

The Government intends to provide exceptions for situations where use of a
copyright work either does not infringe copyright in the first place, or is
otherwise permitted because there is a copyright exception under New
Zealand law. Examples might include breaking a region-code on a DVD
legitimately purchased overseas in order to enable it to be viewed on a New
Zealand DVD player, breaking a TPM to allow reverse engineering of software
or interoperability of devices, breaking a TPM to reformat a work to enable
access by the print disabled, or breaking a TPM to protect privacy.

A broad and flexible exceptions provision also applies to all the copyright
provisions in TPP. This means TPP Parties will retain their current ability
to adopt and maintain copyright exceptions under international law. New
Zealand’s current copyright exception for temporary electronic copies (such
as cached or buffered copies of websites and internet data) would not need
to be changed.

TPP Parties will also endeavour to achieve balance in their copyright and
related rights systems, including through the adoption of new exceptions
and limitations. This obligation will help ensure copyright laws remain
relevant in light of changing technology.

New Zealand will need to provide new exclusive rights to performers of
copyright works such as musicians and actors. This will give performers
rights similar to those of other copyright owners. Currently performers
have more limited rights than copyright owners.

TPP will not require New Zealand to introduce any major changes to internet
service provider (ISP) liability provisions relating to internet copyright
infringement. For example, the provisions will not require ISPs to
terminate internet accounts or adopt a “three strikes” - style graduated
response regime.

Parallel importing

TPP will not require any changes to New Zealand’s laws on parallel
importing. TPP allows Parties to freely determine international exhaustion
of intellectual property rights.

Data protection: Biologics, new uses of pharmaceutical drugs, and
agricultural chemicals

The TPP outcome on data protection for pharmaceuticals (including
biological pharmaceuticals) can be met within New Zealand’s current policy
settings and practice.

New pharmaceuticals require safety and efficacy approval before entering
the New Zealand market. Data protection sets a period of time that generic
manufacturers have to wait before they can rely on the data provided by the
supplier of a new pharmaceutical product to progress the approval of their
own generic version. The length of data protection needs to balance
producer and consumer interests by providing an incentive to bring new
pharmaceuticals to New Zealand without unreasonably delaying the entry of
generics to the market.

New Zealand law provides five years of data protection for small molecule
and biological pharmaceuticals (also known as biologics). TPP requires New
Zealand to continue to provide five years of data protection for small
molecule pharmaceuticals. For biologics, New Zealand will be required to
provide the five years of data protection together with further effective
market protection through other measures, taking into account local market
circumstances. Although these are new obligations for New Zealand, they can
be met within existing policy settings and practice.

TPP Parties have also agreed to review the period of market exclusivity
provided for biologics after 10 years.

TPP would also require New Zealand to provide five years data protection to
new pharmaceutical products that contain a new and a previously approved
active ingredient. This is consistent with New Zealand’s current law.

New Zealand will also need to provide 10 years of data protection for new
agricultural chemicals. Protection of five years is already provided in New

Patent term extension to compensate for unreasonable delays

New Zealand will be required to extend the term of a patent to compensate
for any unreasonable delays in the patent examination process.

Similarly, New Zealand would need to extend the term of a patented
pharmaceutical product if there were unreasonable delays in the safety and
efficacy approval process run by Medsafe.

Very few unreasonable delays are expected to occur in New Zealand, and only
in exceptional circumstances, given the efficiency of patent grant and
regulatory approval by the Intellectual Property Office of New Zealand
(IPONZ) and Medsafe respectively. This is because the agreement requires an
extension of the patent only for certain types of delay:

• Patent office delays will only be counted if the patent has not been
granted within five years of its filing date, or three years from the time
the patent applicant requests its examination.

• Delays attributable to actions of applicants and third parties do not
require an extension, for both patent office delays and delays in Medsafe’s
regulatory approval process.

Patent linkage

New Zealand will need to provide for ‘patent linkage’ but will not need to
adopt the patent linkage models found in some other TPP countries. Patent
linkage under TPP will require the Government to put in place a system that
enables a pharmaceutical patent holder to be notified that a generic
version of their product has been submitted to Medsafe for regulatory
approval. New Zealand will also need to ensure there is sufficient time and
opportunity for a patent owner to seek preliminary injunctions to resolve
patent disputes prior to a generic version of its patented medicine
entering the market. New Zealand’s current law and practice is sufficient
in this area. Medsafe will not be required directly to prevent a competitor
placing a generic on the market until the patent expires, or resolve patent
disputes. That will remain a matter for New Zealand Courts.

Regulatory review exception

TPP will require each Party to provide an exception to patent rights that
allows the use of a patented pharmaceutical to produce information required
to seek regulatory approval of a generic version of the pharmaceutical

This exception is important as it will help enable pharmaceutical
manufacturers to seek regulatory approval for a generic pharmaceutical
product without infringing any patents. This exception is already provided
for under New Zealand law.

TPP does not prevent Parties from allowing pharmaceutical manufacturers to
export generic pharmaceuticals in order to seek regulatory approval in
other countries. Exporting for this purpose is currently permitted under
New Zealand law.

Grace period

New Zealand will need to adopt a 12 month “grace period” for patent
applicants. This means that if inventors make their inventions public, they
will not lose their ability to be granted a patent in New Zealand if a
patent application is filed within 12 months of the disclosure.

Geographical indications

A geographical indication is a sign or name used in relation to goods that
have a specific geographical origin and qualities attributable to that
origin, like champagne. The provisions on geographical indications (GIs) in
TPP will ensure that Parties to the agreement follow due process when
protecting the majority of GIs under domestic laws and regulation. These
include considering whether a term is a generic name in that market, and
providing procedures to oppose and cancel GIs.

Separate due process standards will also apply where TPP Parties agree to
protect GIs through trade agreements. While these provisions are more
flexible, they will ensure exporters in the TPP region have a sufficient
opportunity to make comments on the terms that Parties are considering
protecting through trade agreements. The provisions also safeguard against
terms remaining protected where they are no longer legitimate GIs. It will
benefit New Zealand exporters who use common names to market their goods

Additional damages for trade marks

New Zealand will need to give New Zealand courts discretion to award
additional damages for trade mark infringement, on top of the compensatory
damages already provided for under New Zealand law. This would align
damages for infringement of trade marks with those for copyright
infringement in New Zealand.

Enforcement of copyright and trade marks at the border

New Zealand would also need to provide the New Zealand Customs Service with
further ex officio powers, to allow Customs to act on its own initiative to
temporarily detain suspected infringing goods. Rights owners could then
provide a notice requesting that Customs undertake the usual customs
process in relation to such goods.

Additional treaties: New Zealand accession

The chapter contains a list of multilateral intellectual property treaties
that the Parties have committed to join if they are not already members.
Within three years of TPP entering into force, New Zealand will need to
join the following:

• World Intellectual Property Organisation (WIPO) Copyright Treaty (WCT).
• WIPO Performances and Phonograms Treaty (WPPT).
• Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure.

New Zealand law is generally consistent with the WCT. While New Zealand law
would be generally consistent with the WPPT some minor technical changes
might be necessary, particularly in respect to the rights of performers.

UPOV 91 and traditional knowledge

TPP also includes a requirement for New Zealand to, within three years of
entry into force of TPP, either accede to the most recent 1991 version of
the International Convention for the Protection of New Varieties of Plants
(UPOV 91), or alternatively, under a New Zealand specific approach,
implement a plant variety rights system that gives effect to UPOV 91.

When implementing this obligation, New Zealand is able to adopt any measure
that it deems necessary to protect indigenous plant species in fulfilment
of its obligations under the Treaty of Waitangi (and this is not subject to
the dispute settlement provisions in TPP).

This gives the Government flexibility to decide, in consultation with
relevant stakeholders, how to best meet the obligations in respect of UPOV
91, while taking into account the recommendations in Waitangi Tribunal
report Ko Aotearoa Tenei (WAI 262).

TPP also includes a number of provisions aimed at improving the treatment
of traditional knowledge in intellectual property systems. These encourage
information sharing between intellectual property offices on their
practices for dealing with traditional knowledge, and require Parties to
endeavour to ensure that quality patent examination practices are applied
when applications for patents relate to traditional knowledge.

TPP also permits a Party to take measures to preserve, promote and respect
traditional knowledge and traditional cultural expressions in a manner
consistent with that Party’s international obligations.

1. This means that copyright in music recordings and films continues for 50
years after they were made. Copyright in books, screenplays, music, lyrics
and artistic works continues for 50 years after the death of the author.

James Love.  Knowledge Ecology International
KEI DC tel: +1.202.332.2670, US Mobile: +1.202.361.3040, Geneva Mobile:
+41.76.413.6584, twitter.com/jamie_love

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