FHBOSTON-4606314-Ver1-Consolidated TPP Issues

Overview of Chapter 18 of TPP

Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

18.20: Use of Identical or Presumption not compliant, not Similar Signs but prima facie analogous. compliant, piantotst test: (i) by comparison of the conflicting marks; (ii) by considering the goods/servi ces to which the conflicting marks are to be applied; and (iii) by considering the type of customers of the proprietors of the conflicting marks. Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

18.22: Well-known Para 1: no AIPLA Para 1 not complaint: no Para 1 not compliant: Well known Para 1 in Para 1 in Trademarks position US already has party should require well- mark must be registered in Mexico compliant: compliant: Paragraph 1 does not treaty obligations to known marks to have been no strict recognized require well-known marks recognize well known registered in any requiremen the well- to have been registered in marks jurisdiction, on a list of well- t that the known any jurisdiction; AIPLA’s past action known trademarks or given trade mark status of Paragraph 4 currently (PA425-12) recognizes prior recognition as a” well- has been the mark appears to require a that registration can be known” mark. US requires registered even finding of confusion, prevented if a mark is priority of use in its in the Party though the confusingly similar to a territory in order to protect or other mark was well-known mark a well-known mark jurisdiction. neither and/or if it dilutes a registered well-known mark even if Para 4 not compliant: Para 4 in nor used in that mark is not Paragraph 4 also currently compliant: Vietnam at registered in the US appears to require a finding Section 70B the time of except under limited of confusion, yet the of TMA the circumstances, so our question regarding whether 1976 recognition position is already there can be confusion if provides generally consistent the well-known mark owner for the with the language of does not use their well- protection TPP. known mark in the US of well- remains an open issue. known “Prohibiting use” trade Para 4: AIPLA already contemplates an action that marks by closely following this would be taken by an way of an aspect of the developing administrative office, rather injunction US law, having recently than a court. The USPTO submitted an amicus generally cannot prohibit brief in Belmora v. Bayer the use of a trademark. (Flanax). AIPLA filed an amicus brief in Belmora consistent with this position. Based on this decision, we are encouraged that the US could be in a position to comply with this aspect of Paragraph 4, however, the law would need to be consistent with Belmora. Overview of Chapter 18 of TPP

18.25: Classification of Paragraph (b) as phrased Compliant: Mexico is part of the Nice Com Goods and Services. could eliminate the Agreement plian This Article requires each classification of goods and t: Party to adopt a services as a factor to Perú classification system that consider in an infringement alrea is consistent with the Nice analysis. dy Agreement AIPLA should monitor the uses application of this provision the as this provision is not Tent intended to be the h exclusive law governing Editi similarity or dissimilarity. on of the Nice Classi ficati on Syste m and regist ratio ns. Peru analy zes the trade mark appli catio n base d on possi bility of confu sion amo ng trade mark s on each class and not nece ssaril y on Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

the prod ucts/ servi ces they indivi duall y distin guish . Overview of Chapter 18 of TPP

18.28: Domain Names Inconsistent with the UDRP, Not compliant: Mexico has its own in MYDRP is Not being both narrower in Dispute Policy for the .mx ccTLD, comp very similar compliant: Section 2 states remedies some respects to the UDRP namely the “Domain Name Dispute liant: to the This shall be available ”at least and broader than the UDRP Resolution Policy for .mx” (LDRP), speci UDRP “profit” in cases in which a person in other respects. Also, which although is a variation of the fic limitation is registers or holds, with a removal of such language “Uniform Domain Name Dispute natio not found bad faith intent to profit, a would eliminate Resolution Policy” for generic domain nal anywhere domain name that is inconsistencies with Section names, has its own particularities. laws in the identical to or confusingly 1’s advocacy of the use of that UDRP or in similar to a trademark. dispute resolution policies are in Vietnam’s similar to the UDRP with accor laws, and respect to ccTLD’s. This danc bad faith provision only impacts e can in fact country code top level with be found domains. In the case of the this for other U. S., that is the .us ccTLD. articl reasons The .us ccTLD is e. It than a administered by Neustar, is profit under contract with the legal motive. National requi Thus, we Telecommunication and reme opine that Information Administration. nt to the TPP Arbitration of usTLD estab standard disputes is currently lish for finding conducted under the exist bad faith is usDRP, a slight variant of ence too narrow. the UDRP. of each The “profit” limitation is not dama found in the UDRP, and bad ge faith can be found under the UDRP for other reasons than a profit motive. For example, bad faith can be found under the UDRP when a domain registrant has engaged in a pattern of preventing trademark owners from reflecting their marks in corresponding domain names. (See UDRP par. 4(b)(2)). Thus the TPP standard for finding bad faith is too narrow.

In other ways, the TPP language is too broad. The UDRP prohibits a finding for Complainant where the domain name registrant has legitimate rights or Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

interests in the name subject to the domain registration (UDRP par. 4(A) (2)). The TPP text does not exclude ruling against domain name registrants on that basis. So in that regard, the TPP language would improperly require a ruling against a domain registrant, even in some cases where that registrant has rights or legitimate interests to the name. Overview of Chapter 18 of TPP

"2. In connection with Preventing “commercial In compliant: already an applicable Not Not each Party’s system for use” of a country name may provision in the Industrial Property compliant: compliant: the management of ccTLD go too far as it could impact Law regarding the registration of TMA does no domain names, legitimate commercial uses geographical indications, names, etc. not provision in appropriate remedies[17] such as labeling However, it would worth to consider prevent the Vietnam’s shall be available at least requirements imposed by an amendment to the Law to include “commerci laws that in cases in which a person member states. Such a this specific chapter and clarify the al use” of a regulate registers or holds, with a provision might also cause a specific types of commercial uses that country “country bad faith intent to profit, a shift in the burden of are not permitted name. names” domain name that is policing these matters from identical or confusingly an individual country to all similar to a trademark." the member states, which could lead to undesirable results Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

18.37: Patentable Subject AIPLA supports a Consideration should be Para 1 Not compliant: Mexican Law Para Para 1 not Not Matter harmonization treaty given whether our current must establish which are the specific 1 not compliant: comp where the understanding of “ineligible fields of technology that do not comp the liant: Para 1: requires that each identification of subject matter” as contravene with the exceptions of liant: Vietnam Chile Party make patents technical fields is not understood by the Supreme articles 16 and 19 of the Mexican allow Patent an available in all fields of required, but Court (Alice and Mayo) Industrial Property Law. s Office Law technology consistency of the would preclude covering pate basically forbi ‘patentable subject some fields of technology. Para 4 Not compliant: the MIPL must nts rejects use ds Para 4: Each Party matter’ decisions of U.S. Para 4 not compliant: distinguish the inventions derived for inventions any requires patent availability courts with Article 27.1 consideration must be from plants from the plant varieties, any in general, pate for inventions that are of TRIPs (obligating given whether this is which are not considered in the inven though it ntabi “derived from plants” parties to make patents contrary to our excluding Patent Chapter of this Law. tions, lacks lity of available for innovations patents covering matter but convincing anim in all technology that is existing in nature. furth legal als sectors) and this TPP er grounds. In and/ Article deserves further inclu light of the or study. des TPP, we plant an anticipate s. As articl that the an e Patent inven defin Office will tion ing change “deri what their ved are treatment from not of use plant consi inventions. s” dere However, it may d is unclear const inven whether, itute tions even with an the change, exce new ption indications to or new our methods Law, such as Chile new dosing may will be have patentable. to chan ge the law or at least creat e an exce ption whic h Overview of Chapter 18 of TPP

allow s anyo ne to pate nt inven tions deriv ed from plant s Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

18.38: Grace Period: AIPLA supports a treaty US grants a Grace Period Not compliant: MIPL contemplates Not Not providing that the before a priority date. this period prior to the filing date of compliant: compliant Subsection (b) indicates effective global Unless the words “at least” the patent application or, where the IP Law : the new that the twelve (12) priority date may be at the beginning of this applicable, prior to the acknowledged will be Patents months should be prior to used for purposes of section be considered as a priority date. The earliest priority date adjusted to Act 2013 the date of filing in the both novelty and minimum standard. But should keep considered. extend the only territory. obviousness. footnote 31 permits the US current six- offers a 6 to continue its current law month month of applying a 12-month grace grace Grace Period to an 18- period to period in month Patent Publication 12 months, certain, (assuming there was no rather previous publication). restrictive , circumsta nce. The old patents Act 1953 offered a “local novelty” provision, which on occasion gave rise to an equivalen t outcome. Overview of Chapter 18 of TPP

Article 18.47: Protection The measures of TPP Not compliant: no legal provisions in of Undisclosed Test or relating to Agricultural Mexico for undisclosed test or other Other Data for Agricultural Chemical Products provide data. Chemical Products for a 10-year period of protection of data submitted for marketing approval of a new agricultural chemical product. Lower than the protection period for pesticides in the US which currently have 10 years of data exclusivity followed by 5 years of additional “remuneration.” The provisions are similar to data protection provided under section 3 of Federal Insecticide, Fungicide, and Rodenticide Act. (FIFRA, Appendix B). FIFRA is administered by the Environmental Protection Agency (EPA). Section 3(c) (1)(F)(i) of FIFRA apply to those data that are submitted to support the initial registration of a product containing a new active ingredient. FIFRA provides a 10-year period of protection for data submitted in support of marketing approval of pesticides. Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

18.50: Protection of Require the “consent” of Undisclosed Test or Other the person that previously Data submitted the information (clinical/test data) to allow marketing before 5 years from approval of the reference product. Consent is not necessary in the US under the current Hatch- Waxman regime. Rather, after 4 years a generic may file an ANDA with a paragraph IV certification . Overview of Chapter 18 of TPP

18.52: Biologics Requires 12 years. Concern Not compliant: 0 year Not raised that TPP will be used comp to lower US exclusivity liant: Requires at least 5 or 8 period. 0 years of data exclusivity. year Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

18.59: Right of “making available” is not In compliant Not In Communication to Public an enumerated copyright compliant: compliant "making available" right right under section 106, but the courts have found that exclusive “making available” can right of form a basis for secondary communica liability, for inducing tion to the infringement by others, for public lies example, but this also in the requires other elements to exclusive be proven as a separate licensee cause of action. It could and/or also be contrary of the First owner of Amendment, to the extent copyright that it could be said to impose restrictions on directing the public to particular works. Within the committee, not settled position on whether it should be or not, depending on whether you are user vs content holder. Consider that current copyright licenses and assignments do not explicitly contemplate the right of communication comprised in Article 18.59, would it flow to authors regardless of ownership? In other words is this intended to function in a similar way to droit moral save that it is not limited to works of visual art?

Per Copyright office, inducement and secondary liabiilty will attach. In certain cases, but not all cases. http://copyright.gov/docs/ making_available/making- available-right.pdf (pp.4-5) Overview of Chapter 18 of TPP

18.75: Provisional TPP makes this remedy Section 1 requires In In Not measures available on a much expeditious handling of a comp compliant compliant: wider basis (lower request for relief “inaudita liant but the difficult in threshold of proof). altera parte” – a Latin but damage practice to phrase that effectively the must be obtain TRIPS requires ex parte means “secretly and Peru irreparable injunction provisional relief, without the adversary being vian and cannot Copyright Office heard”. Auth be indicates that current ority adequately law provides for this. Section 2 requires "any does compensat reasonably available not ed by evidence" and "a sufficient com damages. degree of certainty" monl This y requiremen Section 3: each Party shall requi t should be provide that its judicial re included to authorities have the the prevent authority to order the appli abuse. seizure or other taking into cant custody of suspected to infringing goods. provi Section 1: no provision de a emphasizing how secur extraordinarily rare such a ity proceeding should be, and when no standards to prevent requ abuse. estin g Section 2: does not invoke provi the "irreparable harm" siona required by US law and l TRIPS in order to obtain ex meas parte seizure. ures. Also, Section 3: substantially coun strengthen the pre- terfei judgment and/or ting administrative remedies cases which are available to rights in holders. Peru Ex parte relief is available in are US law, on very limited not grounds for plaintiff, judici required showing that if D is al given notice D would likely but flee, destroy evidence or admi secrete money. nistr ative proc edur es Provision AIPLA US Mexico Peru Malaysia Vietnam Chile New Brun Australia Zealand ei

18.77: Criminal AIPLA supports civil Criminal liability is Not compliant: the Mexican law need Com Compliant Partial Procedures and Penalties equity and monetary expanded beyond to adapt the camcording premise as plian compliant: remedies only circumstances where the an offense t but unclear motivation is financial gain. need whether to existing defin criminal e offences cover fines labels or and packing, as sente distinct nces from ‘goods’ of alone.. impri sonm ent being "suffi cientl y high" Overview of Chapter 18 of TPP