A Review of the Patent Related Provisions of the TPP – Patentable Subject Matter and Grace Periods

The Trans-Pacific Partnership (TPP) is a trade agreement between twelve Pacific Rim countries concerning various matters of economic policy. The parties to the TPP include the United States, Mexico, Japan, Canada, Australia, Malaysia, Chile, Singapore, Peru, Vietnam, New Zealand and Brunei Darussalam. Agreement between the parties on the TPP was reached on October 5, 2015, after nearly seven years of negotiations. It is believed that once the agreement is ratified by each country’s congress or parliament (which is expected in early 2016), that the accord will become the most significant, economically-impactful trade deal in history.

On October 9, 2015, WikiLeaks released the final “agreed” version of the TPP chapter on intellectual property rights. According to the document released, a final “legal scrub” of the document is all that remains as negotiations between the parties have been completed. We, at the BRIC Wall Blog, thought it would be interesting in the next several posts to examine certain of the patent and pharmaceutical/regulated product sections of this chapter. We look forward to receiving comments on these sections.

Patentable Subject Matter

Article QQ.E.1 of the chapter discusses patent eligible subject matter. According to this Article, subject to certain exclusions, each party “shall” make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves inventive step, and is capable of industrial application. Additionally, each party agrees that patents are available in their country for new uses, methods or processes of using a known product.

The following may be excluded from patentability:

  1. Inventions, the commercial exploitation of which are contrary to public order or morality, or the prevention of which is necessary to protect human, animal or plant life or health or to avoid serious prejudice to nature or the environment (provided that such exclusion is not made merely because the exploitation is prohibited by their law).
  2. Diagnostic, therapeutic, and surgical methods for the treatment of humans or animals.
  3. Animals other than microorganisms.
  4. Essentially biological processes or the production of plants or animals, other than non-biological and microbiological processes.
  5. Plants other than microorganisms (although each party confirmed that patents are available at least for inventions derived from plants).

In general, there is not much in this chapter that stands out as a providing any significant change or departure from any of the patent laws of the 12 countries.

Grace Periods

Article QQ.E.2 of the chapter discusses a grace period for public disclosures prior to the filing of a patent application. Specifically, according to this Article, information contained in public disclosures “shall” be disregarded for purposes of determining novelty or inventive step if the public disclosure:

  1. Was made by the patent applicant or by a person who obtained the information directly or indirectly from the patent application; and
  2. Occurred within 12 months prior to the date of filing of the application in the territory (of the party).

This chapter provides some uniformity with respect to the grace period for each of the parties. Although a 12 month grace period was already provided by the laws of most of the 12 countries, this article provides an increase over the 6 months provided under the laws of Japan and New Zealand (which provides a grace period of 6 or 12 months depending on the circumstances).

This post was written by Lisa Mueller.

2 thoughts on “A Review of the Patent Related Provisions of the TPP – Patentable Subject Matter and Grace Periods

  1. Lisa, thanks for the update. Regarding “Additionally, each party agrees that patents are available in their country for new uses, methods or processes of using a known product,” this is a dramatic change for Peru. Currently, Art. 21 of Andean Decision 486 and various decisions from the Andean Court of Justice exclude uses and second uses from patentable subject matter. It will be interesting to see how Peru negotiates with its Andean partners (Colombia, Ecuador and Bolivia) in order to modify Andean law and allow it to provide patents for second uses.

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