* For details, click the index.
1. Outline of TPP Agreement
The Trans-Pacific Strategic Economic Partnership Agreement (so-called TPP Agreement, also referred to as the Trans-Pacific Partnership Agreement) was concluded based on the expanded agreement made in 2006 by four countries of Singapore, Brunei Darussalam, Chile, and New Zealand (also referred to as the P4 Agreement) (currently valid). So far, expanded negotiation had been set forward by the above four countries and additional eight countries, i.e., by twelve countries in total (see the map image on 2. TPP partner countries).
The partner countries reached a consensus in principle on the TPP Agreement at the Ministerial Meeting in Atlanta held on October 5, 2015, and on February 4, 2016, the twelve partner countries signed the TPP Agreement in Auckland, New Zealand.
In accordance with the signatures, from now on, the partner countries are each expected to accelerate a movement to, for example, ratification of the TPP Agreement and establishment of domestic laws based on the TPP Agreement.
For example, in Japan, on March 8, 2016, “the Bill on the Establishment of Relevant Acts Due to the Conclusion of the Trans-Pacific Partnership (TPP) Agreement” (hereinafter referred to as “the Bill”) was approved by the Cabinet, and submitted to the Diet.
The Bill contains a bill for approving ratification of the TPP Agreement and a bill for revising domestic laws due to the ratification of the TPP Agreement. For example, the bill for revising domestic laws includes, for example, (i) for the Patent Law, the clause of exceptions to lack of novelty of an invention and the clause of extension of the term of protection of a patent right, (ii) for the Copyright Law, the non-complaint provision against copyright infringements and the clause of extension of the term of protection of a copyright, and (iii) for the Trademark Law, the clause of damage compensation against unlawful use of a trademark.
The Bill was not approved in the current Diet session mainly due to the effects caused by the earthquake in Kumamoto, but the Bill is expected to be carried over to the next Diet session.
The TPP agreement is a comprehensive agreement on the rules of trades, investments, etc. between the participating countries in a wide range of areas (including, of course, intellectual property rights). A brief discussion on the TPP’s intellectual property chapter is provided below.
After the TPP Agreement is formally ratified by each government of the participating countries, domestic laws (e.g. patent law) of each participating country are expected to be revised. Accordingly, information on the law reform will be updated on each participating country’s introduction page of our website.
2. TPP Partner Countries
Twelve countries are currently participating in the TPP Agreement, as shown in the map image below. (For details, click the name of the country.)
* Other Pacific Rim countries including Korea, Thailand, Philippines, and Taiwan also have interest in the TPP Agreement, and may participate in the TPP Agreement in the future.
3. Outline of TPP’s Intellectual Property Chapter
The intellectual properties such as “Trademarks”, “Patents”, “Industrial designs”, “Copyrights”, “Protection of pharmaceutical products”, “Geographical indications”, etc. are covered by the TPP Agreement. Other miscellaneous issues such as exertion of intellectual property rights are also stipulated in the TPP Agreement. We introduce these items below.
- Obligation to participate in the “Madrid Protocol” relating to international trademark registration (Malaysia, Canada, Peru, Brunei Darussalam, etc. have not participated in this protocol yet) or in the “Singapore Trademark Law Treaty” relating to international harmony, etc. in application of trademark registration (Malaysia, Canada, Peru, Mexico, etc. have not participated in this treaty yet).
- Obligation to cover protection of trademarks in the forms of “sound”, “movement”, etc.
→ To cope with this provision, the Japanese Trademark Law underwent revisions in 2015 to cover protection of new trademarks such as “sound”.
- Obligation to introduce the Statutory Damage Compensation System or the Additional (Punitive) Damage Compensation System against unlawful use of a trademark.
→ Under the current Japanese Trademark Law, it is necessary to prove not only the fact of damages but also the amount of damages for lost profits. However, it is expected that, in the future, a certain amount of compensation for damages will be awarded if the fact of damages is proven.
→ The amount of compensation for damages is currently stipulated as an amount not in excess of the amount of damages that the owner of a trademark right suffered (for example, not in excess of an amount of lost profits). However, in the future, both the amount of damage for lost profits and a certain amount of compensation may be awarded as the amount of compensation for damages.
- Obligation to introduce the clause of exceptions to lack of novelty of invention for patent applications within twelve months of publication of the invention.
- Patent Term Extension System: Obligation to introduce a system to approve extension of the term of protection of a patent right in a case where examination for a patent application is unreasonably delayed for more than five years from the filing of the application or for more than three years from the filing of a request for the examination.
- Obligation to introduce the First-to-File principle.
3-3. Industrial Designs
- There is no particular independent provision about industrial designs, but it is recommended to accede to the Hague Agreement relating to international application of industrial designs.
- The term of protection of copyright must cover the life of the author and seventy years after the author’s death (under the current Japanese Copyright Law, the term of protection of copyright cover the life of the author and fifty years after the author’s death).
- Obligation to introduce the non-complaint provision against copyright infringements (provided that, in a case where a derivative work does not exert large influence on the profitability of the original work etc. in the market, that derivative work does not fall under this provision).
- Introduction of a system relating to copyright infringements such as opening a work to the public via Internet without a consent of the copyright owner. Under this system, internet providers that take, upon receipt of notification from the copyright owner, measures against such infringements are exempted from the damages.
- As with trademarks, obligation to introduce the Statutory Damage Compensation System or the Additional (Punitive) Damage Compensation System for copyright infringements.
Click here to find more information about influence etc. of the TPP agreement on the Japanese copyright system.
3-5. Protection of Pharmaceutical Products
- Introduction of a system relating to the term of protection of patent rights of pharmaceutical products. Under this system, an adjustment of the patent term is permitted to compensate the owner of a patent right of a pharmaceutical product for unreasonable curtailment of the patent term as a result of marketing approval procedure.
- Introduction of a system relating to the term of protection of clinical test data, etc. of a new pharmaceutical product.
→ Under this system, among clinical test data related to marketing approval for pharmaceutical products, clinical test data of chemical-substance-based pharmaceutical products are obligated to be protected for the minimum of five years from the date of marketing approval, and clinical test data of biotechnology-based pharmaceutical products are obligated to be protected for the minimum of eight years from the date of marketing approval.
- Introduction of the Patent Linkage System (under this system, the presence of effective patents must be taken into consideration during the examination of marketing approval of a generic drugs. For example, the owner of an effective patent right related to a generic drug is notified when an application for marketing approval on the generic drug is to be examined).
*These systems are already present under the current Japanese laws.
3-6. Geographical Indications
As to administrative procedures for protecting or authorizing geographical indications, the following provisions are stipulated:
- (1) Applications etc. must be processed without imposing excessive procedures on the applicants.
- (2) Geographical indications for which applications etc. have been filed must be opened to the public, and procedures for raising opposition to such applications must be stipulated.
- (3) Provisions about cancellation of protection or authorization of geographical indications must be stipulated.
In addition to the above provisions, the following provisions must be stipulated so as to protect intellectual property rights in a manner equivalent to or greater than the WTO･TRIPS Agreement and the ACTA (Anti-Counterfeiting Trade Agreement):
(1) Authorizing the authorities concerned to take measures such as suspension by authority etc. on importation, exportation, and passage of products in question of trademark right infringement or copyright infringement.
(2) Obligation to subject criminal penalties on unlawful acquisition of business secrets, on use of labels and/or packages infringing trademark rights, and on secret videoing of movies.
(3) Introduction of (i) criminal penalties on production and/or sale of devices for illegally unlocking cipher that limits viewing of satellite broadcastings and cable televisions and of (ii) relief measures for civil affairs on production and/or sale of such devices.
･Website of the Ministry of Foreign Affairs of Japan - “Trans-Pacific Partnership (TPP) Agreement Negotiation”
･Website of TPP Governmental Countermeasures Office - Cabinet Secretariat of Japan
＊ The original English text of the TPP Agreement and its Japanese translation are available from the above website of TPP Governmental Countermeasures Office - Cabinet Secretariat of Japan.