On 5 October 2015, after five years of negotiations, Australia,
Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru,
Singapore, the United States, and Vietnam, entered into a landmark
trade agreement known as the Trans-Pacific Partnership (TPP). This
agreement covers 40 per cent of the global GDP. A month later, the
full text was published by both the New Zealand and US governments.
Chapter 18 of the TPP text broadly discusses various IP rights and
matters such as traditional knowledge, copyright, patents,
software, cybersquatting, geographical indications and trade marks,
even going as far as to specifically encourage member countries to
allow registration of scent marks.
For the Canadian IP system, two of the key issues of this chapter
have to do with pharmaceutical patents and copyright.
With respect to pharmaceutical patents, according to Articles 18.46
to 18.48, 18.50 and 18.51, each party of the TPP shall make
available an adjustment of the patent term to compensate the patent
owner for unreasonable curtailment of the effective patent term as
a result of the prosecution process and the first marketer due to
delays in the marketing approval process. Article 18.50 of the TPP
provides new drug manufacturers with at least a five-year market
exclusivity period. With respect to biologics, Article 18.52 of the
TPP provides at least an eight-year market exclusivity period or at
least five years plus additional market-specific measures.
With respect to copyright, Article 18.63 of the TPP provides a
minimum copyright protection term of the life of the author plus 70
years and 70 years from the first authorised publication of
corporate works. Furthermore, Article 18.69 of the TPP provides for
criminal procedures and penalties for copyright violations.
Article 18.74(3) of the TPP text provides the infringer to pay the
right holder damages adequate to compensate for the injury the
right holder has suffered because of an infringement of their
intellectual property. Under Articles 18.74(4) and (6), judicial
authorities can consider any legitimate value the right holder
submits including pre-established damages and additional damages.
Furthermore, Article 18.74(12) provides that material and
implements that have been used in the manufacture or creation of
and infringing product be destroyed or disposed of so as to
minimize the risks of further infringement.
To assist with copyright enforcement, Article 18.82 of the TPP
ensures that legal remedies are available for rights holders to
address copyright infringement which include legal incentives for
Internet service providers (ISPs) to cooperate with copyright
owners to deter the unauthorized storage and transmission of
copyrighted materials. Article 18.82(3)(a) provides a requirement
for ISPs to remove or disable access to material on their networks
upon obtaining knowledge of infringement. This provision is similar
to the "notice-and-takedown" system of the Digital
Millennium Copyright Act in the USA.
Canada had already negotiated a patent term extension capped at two
years in a proposed trade agreement with the European Union (CETA).
At present, however, Canada is the only G7 country that does not
offer patent term extensions. Furthermore, Canada presently allows
the manufacturer of an innovative drug a period of eight years of
market exclusivity. The bigger impact will be seen more with
respect to copyright provisions. At present, Canada currently has a
copyright term of life of the author plus 50 years. Penalties under
Canada's present Copyright Modernization Act are only up to
CA$5,000 for non-commercial infringement. Furthermore, Canada has a
"notice-and-notice" system where, at most, an ISP may be
required to forward a notice of alleged infringement from a
rights-holder to a subscriber who is allegedly hosting or sharing
While the TPP has been signed, it has yet to be ratified by the
governments of the TPP parties. The Canadian IP community will be
closely monitoring the ratification process as it proceeds in
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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