Today’s blog post has been kindly drafted for us by the South-East Asia IPR SME Helpdesk external expert Mr. Manh Hung Tran from BMVN International LLC, a member firm of Baker & McKenzie International. In his article, Mr. Manh Hung Tran discusses what signing the Comprehensive and Progressive Trans-Pacific Partnership means to its signatories in terms of IPR protection.
At the November 2017 Asia Pacific Economic Cooperation Summit in Da Nang, Vietnam, the 11 countries remaining in the Trans-Pacific Partnership (TPP) took a significant step forward to finalize a new agreement now referred to as the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP).
In the absence of a key player – the United States – this new cross-border deal, the CPTPP is reported to have largely incorporated the TPP on the one hand but “suspended” certain intellectual property provisions on the other hand, in hopes of reviving them when the United States re-joins the agreement at some point in the future. Thus, although the final text has not been published, it is highly likely that the CPTPP has ceased the effect of many IP-related and/or drug-specific articles that the United States rigorously promoted when the TPP was being negotiated.
In light of the above, we think that the following important issues in Chapter 18 of the TPP, which concerns intellectual property, may have been included in the list of suspended provisions of the CPTPP.
- Scope of Patentable Inventions
Article 18.37 of the TPP required its member countries to extend patent protection to “new uses of a known product, new methods of using a known product, or new processes of using a known product.” Reportedly, this is one the points that United States focused on during the TPP negotiation to facilitate protection of drugs invented by US pharmaceutical corporations. However, various countries, mostly developing ones, have been strongly opposed to this approach.
- Copyright and Patent Term Adjustment
The TPP increased the duration of copyright protection to the life of the author plus 70 years, which is 20 more years than the Berne Convention (Article 18.63). Further, the TPP required the signatories to adjust the term of a patent to compensate for delays in the process of patent application (Article 18.46). For drug patents, the TPP also mandated members to adjust the term of a patent to compensate for unreasonable curtailment of the effective patent term as a result of the marketing approval process (Article 18.48). When negotiating the TPP, the United States is said to have actively called for a longer duration of copyright protection and new statutory reforms that would effectively create longer patent terms and constrain the entry of generic drugs into TPP markets.
- Undisclosed Test or Other Data
Similar to Article 39.3 of the TRIPS Agreement, TPP members must protect undisclosed test or other data that authorities obtain as a condition for granting marketing approval for a new drug. However, while TRIPS only generally requires members to protect this against “unfair commercial use,” the TPP goes one step further to specifically mandate members to forbid third 2 BMVN International LLC November 2017 parties from marketing the same or a similar product for at least five years from the date of marketing approval of the drug (Article 18.50).
- Legal Remedies and Safe Harbors
One measure that United States adopted to enforce copyrights in the network environment is the Digital Millennium Copyright Act (DMCA), which vigorously deals with Internet Service Providers by providing certain safe harbors and appropriate sanctions. The United States, therefore, actively imposed similar DMCA standards into the TPP as displayed in Article 18.82. However, a rigid application of these standards in developing countries was said to be impractical and ineffective. Hence, it would not be surprising if this provision is to be suspended when the CPTPP comes into effect.
This article first appeared on Baker & McKenzie website. Please see the original article here: https://www.bakermckenzie.com/en/insight/publications/2017/11/cptpp-what-to-expect/
Name: Manh Hung Tran
Law Firm: BMVN International LLC, a member firm of Baker & McKenzie International
Author’s Short Bio
Mr. Tran Manh Hung is the Managing Partner of BMVN International LLC, a fully licensed law firm and IP agent, which is a member of Baker & McKenzie International.
Mr. Tran has represented numerous multinational and Vietnamese companies in high profile transactions and projects in many different industries including infrastructure, transportation, telecommunications, port, retail, distribution, and intellectual property. Ranked as a leading individual in Intellectual Property by Chambers Global and World Trademark Review, Mr. Tran has successfully represented some of the world’s largest multinational companies in both contentious and non-contentious aspects of IP law, including patents, designs, trademarks, copyright, unfair competition, anti-counterfeiting, anti-piracy, domain names, commercial IP involving franchising and licensing arrangements, trade secrets, and technology. Mr. Tran has also been called upon by the Vietnamese Government to review and help revise the country’s IP Law and the Criminal Code’s IP provisions.
Mr. Tran was voted Vietnam Lawyer of the Year in the National poll of Vietnamese lawyers organized jointly by the Vietnam Lawyers’ Federation, the Ministry of Justice and Vietnam Law Magazine in 2009, has been ranked as the Strongly Recommended IP Lawyer by Global3000, and has received high recognition from Asialaw, and Managing IP Asia. Mr. Tran is also listed in the 2015 edition of Who’s Who Legal in the field of Franchising. In addition to authoring many publications, Mr. Tran also lectures at the Hanoi Law University, Diplomatic Academy of Vietnam, Foreign Trade University, an international MBA Program (CFVG) and intellectual property laws for the Professional Training School of the Ministry of Industry and Trade. He used to serve as the Chairman of the Legal Committee of Hanoi American Chamber of Commerce. Mr. Tran has been practicing law in Vietnam since he graduated from the Hanoi Law University in 1995 with an LL.B. in Economic Law. In 2000 he received his LL.M. in International Economic and Business Law from Kyushu University (Japan) under a scholarship from the Japanese Government. He speaks fluent English and Vietnamese and is proficient in Japanese.