16 June 2015Americas

TPP: Coming into line

There has been a lot of speculation about the Trans-Pacific Partnership (TPP) negotiations over the last couple of years, precisely because no-one is entirely sure what the 12 participating nations are talking about. So far the discussions have been done in secret and external parties’ only understanding of the negotiations is through the documents leaked by journalistic organisation WikiLeaks.

In October, the organisation published provisions put forward in the TPP talks that seek to harmonise intellectual property laws. The 12 nations currently negotiating the trade deal—Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the US and Vietnam—have different IP laws and the attempts to harmonise them will have a variety of consequences for the individual nations involved.

The IP chapter in the agreement contains provisions on modernising plant breeders’ rights. In order to ratify the TPP negotiations the 12 nations must bring their laws into line with the 1991 International Convention for the Protection of New Varieties of Plants (UPOV) agreement.

Under the current provisions put forward in the documents, a nation can grant patents as long as the claims are new, involve an inventive step, and are capable of industrial application. These criteria apply to inventions for animals and plant-related inventions, but patents for “essentially biological processes for the production of plants or animals” are prohibited.

Furthermore, the provisions allow parties to grant protection for plant varieties either through patents or via a sui generis system. Such changes would bring all nations into line with the UPOV agreement.

But so far not every country is party to the 1991 agreement. Brunei, Chile, Malaysia, Mexico and New Zealand are five of the nations that will need to alter, or have already altered, their laws so they fall into line with the UPOV deal.

In order to join the UPOV, member states must “provide for appropriate legal remedies for the effective enforcement of breeders’ rights”; “maintain an authority entrusted with the task of granting breeders’ rights” and “ensure that the public is informed through the regular publication of information concerning applications for and grants of breeders’ rights and proposed denominations”.

Progress to UPOV

The various nations are at different stages of ratifying the 1991 UPOV agreement, and Chile, Mexico and New Zealand are still parties to the previous UPOV agreement, from 1978.

For Mexico, the road to joining the 1991 UPOV agreement has been a little rocky. Roberto Arochi, partner at Mexico-based law firm Arochi & Lindner, says it will be difficult because Mexico will have to amend its Federal Law on Plant Varieties, and attempts to modify it have so far had little success.

“In 2004 and 2007, two amendment bills to the law tried to add the most relevant features of the 1991 agreement. But the 2004 amendment was rejected and the 2007 amendment is still pending.”

Arochi says he would like to see the necessary amendments pass in order to ratify the 1991 UPOV agreement in Mexico. For him, it will expand the protection of plant breeders’ rights so they have “more control in their varieties when there are derivations of them”.

“If the TPP establishes the ratification of the convention, the 1991 UPOV agreement will open the possibility for an enhanced and modern protection of plant varieties,” he argues.

In New Zealand, plant breeders are protected under laws enacted through the Plant Variety Rights Act 1987. Jared Millar, senior associate at law firm James & Wells in Hamilton, says this law grants exclusivity to breeders to sell reproductive material such as fruit, vegetables, seeds and flowers.

From the TPP proposals that have been leaked, Millar expects that New Zealand’s patent laws will need to be amended so that they include protection for plant variety products.

"Previous attempts had been made to amend the 1987 Plant Varieties Act, but these provoked controversy over the issue of rights to flora and fauna products."

“One of the issues in New Zealand in allowing patenting of plants and animals is that it is likely to result in relatively restrictive rights and prohibit the production and sale of the variety itself.

“This would be contrary to current New Zealand law, which has recently seen a major change in the introduction of the Patents Act 2013.

“Under the new Patents Act, plant varieties are not patentable. Therefore this proposal would require an amendment to the Patents Act should New Zealand agree to the TPP,” he adds.

Amending such a law is why Millar thinks New Zealand has not responded enthusiastically to the TPP proposals so far. Previous attempts had been made to amend the 1987 Plant Varieties Act, but these provoked controversy over the issue of rights to flora and fauna products. This moved into the particularly sensitive political territory of indigenous rights for products deemed sacred to the Maori people of New Zealand.

In 2011, the Waitangi Tribunal released a report stating that New Zealand laws “sideline” Maori cultural values in allowing others to commercialise parts of Maori culture. The report referred to the importance of flora and fauna from the region to the Maori people and recommended it be difficult to obtain patents for inventions covering such products.

The issue, Millar says, presents a “sticking point” for enacting the 1991 UPOV Agreement. Millar says some are hopeful this can be resolved in the next 12 months, but this is dependent on the progress of the TPP talks.

Dan Polonenko, partner at law firm Gowlings in Calgary, Canada, says the key development in the 1991 UPOV agreement is the extension of rights for plant varieties. In Canada, plant breeders’ rights are governed by the Plant Breeders’ Rights Act, introduced in 1990, one year before the latest UPOV deal was implemented. The intention was to harmonise plant breeders’ rights with the 1978 agreement.

But updating the legislation since then has been a “ponderous” process, says Polonenko. Despite this, he welcomes the proposed TPP changes because they would bring even greater clarity to what is patent-eligible. In February, Canada enacted the Plant Breeder’s Act, which means its laws governing plant breeders’ rights now correspond to the 1991 UPOV agreement. Polonenko says the most significant changes introduced are the extension of these rights.

Under the new act, protection begins from when a plant breeder files a provisional application, as opposed to when a certificate is granted for the product. It means protection is typically granted during the period of experimentation with plant breeding.

Also, the period of protection for plant varieties will extend to 20 years and for trees and vines, 25 years. Previously the length of protection was 18 years from the point of certification.

Transparency needed

According to a survey in May commissioned by LSIPR’s sister site WIPR, lawyers want to see more transparency within the TPP talks. In the US, polls conducted by the Hart Research Associates and Chesapeake Beach Consulting have revealed opposition to the TPP.

Millar says “it would be helpful if there were greater disclosure around the talks as this may alleviate public concern and allow for more constructive debate”, but he does believe that national interests need to be protected.

Khoo Guan Huat, partner at Malaysian law firm Skrine, says it would be better for the talks to be more transparent so that right owners and IP professionals can prepare accordingly.

“Anyone seeking to launch a generic product would prefer if there were transparency in terms of the TPP.

“Concerns over the secrecy of the talks have been expressed by consumer groups, not patent owners. The consumer groups are worried that if there is going to be an extension to the term of patent protection, access to cheaper generic products will be more restricted.”

Polonenko, however, questions whether transparency would change anything.

IP laws have always operated on a degree of transparency. Members of the public can access national patent and trademark databases and find information on applications, registrations and oppositions.

Long-awaited changes to plant breeders’ rights in the nations that have not yet ratified the 1991 UPOV Agreement may be welcomed by right owners in the relevant jurisdictions, but the method for achieving change may put others less at ease.

Schisms within the 12 nations have reportedly opened up due to the difficulties of implementing such laws. But if and when the TPP agreement is ratified, there will be a political consultation on it within the 12 nations. In order for the TPP deal to be ratified, it will have to achieve majorities among legislators in the nations, and that will require bringing the proposals out into the open.

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