AIPLA Mid Winter Meeting January 28, 2014 IP Practice in Japan Committee Pre-Meeting Phoenix, Arizona The Trans Pacific Partnership – Update on IP Aspects of TPP

Origins and History of the TPP  Negotiations on Sidelines of APEC Meetings since 2002  4-Nation Agreement Entered into Force May 2006  Brunei, Chile, New Zealand and Singapore  Goal of More Liberalized Trade and Investment in APEC  Covers goods, services, IP, Government procurement, etc.  8 Additional Nations Negotiating to Join – 40% world GDP  Australia, Canada, Japan, Malaysia, Mexico, Peru, US and Vietnam  Others Expressing Interest – Bangladesh, Cambodia, Columbia, Costa Rico, India, Laos, Philippines, South Korea, Taiwan and Thailand © AIPLA

The Potential Reach of the TPP © AIPLA

Current Over-arching Goals of the TPP  PROMOTE AN OPEN INTERNATIONAL SYSTEM  Tariffs – reduce to zero in 10 years  Trade Disputes – provide an effective measure to resolve  ENHANCE TRIPS  Reinforce and Further Develop TRIPS Policies  Expand to include "Other IP Issues"  Genetic resources and Traditional Knowledge  PRECLUDE REGIONAL DOMINATION BY ANY ONE COUNTRY  Focus on China © AIPLA

Current U.S. Strategic Goals  HARMONIZATION  Uniformity of Patent, Copyright, Trademark Laws  Consistency with Current US Laws  ADDRESS PIRACY and COUNTERFEITING  Provide a Uniform Policy in the Pacific Region  OPEN MARKETS  Agriculture, Public Works, Services, Insurance, Health  COMPATIBILITY with TTIP (US/Europe Trade)  ENGAGE CHINA – IP and Trade Policies © AIPLA

Impact of TPP on Signatory Countries  HARMONIZATION  Significant Impact on Patents, Copyrights and Trademarks – generally tightening of rights and duties  OPEN MARKETS – greater access  Significant impact on Domestic Policies related to Agriculture, Environment, Insurance, Jobs, Public Health, Public Works, Services and Wages  Generally strengthened enforcement of IP rights  ENVIRONMENT  Established rules – but little to ensure compliance © AIPLA

The TPP Agreement and IP Issues  2005 Agreement  High Level Treatment of IP Issues  Considered Protection of Traditional Knowledge  Addressed Exhaustion of IP Rights  Addressed Geographical Indications  Addressed TRIPS and General Cooperation  Draft 2013 Agreement  Detailed Treatment of IP Issues  Detailed and Bracketed Disclosue of Proposed Chapter published by Wikileaks © AIPLA

The TPP Agreement - US Proposal on IP Issues  Required Accession to International IP Agreements - (PCT, Madrid, Budapest, Berne, UPOV, etc. (Art. QQA6)  PLT and Hague-Designs optional  More Extensive Protection Permitted ( Art. QQA3)  Opposition to Flexible Health Issues (Art. QQA5)  National Treatment of all IPR (Arts. QQA7)  Opposition to Flexible Adoption of Measures to Prevent Abuse of IPRs (QQA9)  Require publication of all IP laws, rule and regs (Art. QQA10)  Oppsition to International Exhaustion (QQA12) 12© AIPLA

The TPP Agreement - US Proposal on IP Issues  Trademarks and Geographical Indications ( Art. QQC1-11)  Domain Names on the Internet (Art. QQC12)  Geographical Indicators (Art. QQD1-14)  Patents (Art. QQE1-23)  Industrial Designs (QQF1)  Copyrights (Arts. QQG1-18,)  Enforcement and Customs (Arts. QQH1-7)  Encryption and Protection (Art. QQH8-12)  ISP Liability (QQI) © AIPLA

The TPP Agreement - US Proposal on Trademark Issues  Registrability  Marks not visually perceptible, sounds and smells are registrable (QQC1)  Collective or Certification marks and Geographical Indications are registrable as trademarks (QQC2)  Exclusive rights extend to identical or similar marks based on likelihood of confusion standard (QQC3)  Fair use is permitted (QQC4)  Well known marks – protection does not require registration, listing or prior recognition (QQC5) © AIPLA

The TPP Agreement - US Proposal on Patent Issues  Patentable Subject Matter – any invention in all fields of technology if new, unobvious and useful (QQE1)  New forms and uses of known product  Plants and animals/biological processes to produce them  Diagnostic, therapeutic or surgical methods for humans if method of using a machine, mfgr or composition  Applicant Public Disclosures 1 yr –disregarded (QQE 2)  Post Grant Invalidity – only grounds for patentability (E4)  Term Adjustment – unreasonable delays (QQEXX)  Pharmaceutical Produts – (QQE16-23) © AIPLA

The TPP Agreement - US Proposal on Patent Issues  Novelty Exception – AIA exclusion from prior art of inventor derived publications within 12 months is required (QQE2)  Enablement, Written Description and Utility – specified as required for patentability (QQE8, 9)  No Requirement for Best Mode  Mandatory Disclosure of File History – search, communications with applicant and patented/non- patented art cited by applicants (QQE12) © AIPLA

The TPP Agreement - US Proposal on Copyright Issues  Exclusive rights given to rights holders to "authorize or prohibit" copies permanent or temporary (transitory?)  Reproductions, performances and importation of works  Parallel Imports authorized or prohibited (Kirtsaeng?)  Term is the US standard – life of author + 70 years (QQG6)  Berne (Art. 18) and TRIPS (Art. 14.6) shall apply  Technological Protection and Rights Management - extensive provisions included re circumvention  Regulation of Related Rights for broadcasting and communication to the public of performances © AIPLA

The TPP Agreement - Remaining Controversy  Secrecy and Lack of Transparency  Litigation to release document  US Congressional concern  Concern in other countries – public interest groups  Obama Administration  Strong support for TPP by Obama  Democratic Party split  Fast Track needed to ensure passage  Opposition exists in both parties © AIPLA

The TPP Agreement - US/Japan IP Issues FUTURE: TARGET DELAYED TO 2014 – SIGNATURE DATE UNCERTAIN IN THE US AND OTHER COUNTRIES DOMO ARIGATO GOZAIMASU © AIPLA