Does the Trans-Pacific Partnership Agreement (TPP) mandate change to Australian IP law?
Dr Tim Fitzgerald and Ernest Graf, Fisher Adams Kelly Callinans
The Australian Minister for Trade and Investment, Andrew Robb, signed the Trans Pacific Partnership Agreement (TPP) on 4 February 2016. The other member countries of the TPP include New Zealand, The United States, Canada, Mexico, Japan, Chile, Peru, Vietnam, Malaysia and Brunei Darussalam. Each member country will now follow its own domestic ratification process that will enable the TPP to enter into force. In
Australia, a Joint Standing Committee on Treaties (JSCOT) inquiry will be conducted and then the Australian parliament will consider legislation implementing the TPP, including any necessary amendments to domestic law.
A media release from Mr. Robb dated 6 October 2015 stated: “In regard to intellectual property, TPP will not require any changes to Australia’s patent system and copyright regime.” However, a review of Chapter 18 of the TPP, raises some questions about whether Australia’s current IP laws are entirely consistent with the TPP. Below we highlight and provide comments on several IP sections of the TPP that could be in conflict with existing Australian law.
|TTP Chapter 18 Item||Heading||Relevant Provisions||Comments|
|18.46 (Section F: Patents and Undisclosed Test or Other Data; Subsection A: General Patents)||Patent Term Adjustment for Patent Office Delays||Measures for adjusting the term of a patent to compensate for unreasonable delays in patent issuance.||The Australian-United States Free Trade Agreement (AUSFTA), in effect since 2004, includes a similar obligation on Australia. However, the AU Patents Act has not yet been amended to enable such patent term adjustments.|
|18.52 (Section F: Patents and Undisclosed Test or Other Data; Subsection C: Measures Relating to Pharmaceutical Products)||Biologics||Adequate market protection associated with obtaining first marketing approval for a biologic including a minimum 8 year term of data exclusivity, or a 5 year term combined with other measures.||During US-AU negotiations it was accepted that the 5 year term of data exclusivity under AU law provided acceptable protection when combined with the strength of protection offered by the AU patent system for biological inventions. However, these negotiations took place prior to the decision in D’arcy V Myriad Genetics Inc & Anor  HCA 35 which excludes nucleic acids with naturally occurring sequences from patentability under AU law. Some biologics can be in the form of nucleic acids with naturally occurring sequences (or sequences highly similar thereto). Only the data exclusivity provisions appear to now be available for protection of such biologics in AU.|
|18.55 (Section G: Industrial Designs)||Protection||Adequate and effective protection of industrial designs.||There is ambiguity under AU design law as to whether Graphical-User Interfaces (GUIs) are appropriate subject matter for design registration. A 1995 Australian Law Reform Commission (ALRC) report indicated that GUIs should not be protectable by design, after which the current Designs Act 2003 (Cth) was drafted. Recently, however, a 2015 Advisory Council on Intellectual Property report has called for GUIs to be protected. Exclusion of GUIs could be considered by some TPP Parties (e.g. the US which explicitly provides for design protection of GUIs) as inconsistent with the provisions of adequate and effective design protection.|
|18.77 (Section I: Enforcement)||Criminal Procedures and Penalties||Criminal procedures and penalties available for unauthorized commercial use of a label or packagingto which a trademark has been applied.||While AU trade mark legislation criminalises various acts involving the application of counterfeit marks to goods, it remains unclear whether existing criminal offences cover labels or packing, as distinct from ‘goods’ alone.|
|18.78 (Section I: Enforcement)||Trade Secrets||Criminal procedures and penalties for trade secret theft.||Currently there are no criminal statutes in Australia concerning trade secret theft. Rather, actions concerning the misappropriation of trade secrets are limited to civil claims for breach of confidence. New criminal statutes regarding trade secret theft would need to address relevant defences to trade secret theft, regarding for example whistle blowers and journalists.|
As will be evident from the above, despite Australia’s current official position, there remains some doubt as to whether Australian intellectual property law is completely consistent with the provisions of the TPP. It therefore will be interesting to observe the conclusions that are reached by the Australian JSCOT, and any subsequent actions taken by Parliament.
It appears that current Australian legislation may need to be amended in order to fully conform with the TPP requirements for patent term adjustment and trade secret protection. Additionally, particularly given the current ambiguity in AU law and the outcome of the abovementioned ALRC report, if it is determined that excluding GUIs from design protection is inconsistent with the TPP provisions, parliament may consider explicitly providing such protection under statute. Finally, it will be of substantial interest to those in the biotechnology industry to observe any consideration by the JSCOT and parliament as to the protection afforded to biologics under current Australian law, including the effect of the recent exclusion of nucleic acids from patentability.
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