From TPP to CPTPP: Suspensions to IP Provisions

On January 23, 2018, Canada and 10 other signatories[1] of the now-defunct Trans-Pacific Partnership (TPP) concluded a series of negotiations in Tokyo concerning the planned "Comprehensive and Progressive Agreement for Trans-Pacific Partnership" (CPTPP). The core elements of the forthcoming agreement, which came to life following the United States' withdrawal from the TPP in January 2017, were agreed upon by the remaining 11 parties on November 10, 2017 during meetings in Da Nang, Vietnam.[2]

The negotiations thus far contemplate significant changes to intellectual property (IP) chapter of the original TPP.[3] While the text of the CPTPP has not been released, the parties have agreed to suspend a number of IP provisions that were originally agreed to in the TPP. It is currently unclear whether the suspensions are permanent or the provisions will be reinstated at a later date. An official signing cermony for the CPTPP is expected to be held in late March in Chile.

A summary list of the suspended IP provisions from the TPP are as follows:[4]

• National Treatment - Article 18.8 footnote 4 (last two sentences)
• Patentable Subject Matter - Article 18.37.2 and 18.37.4 (second sentence)
• Patent Term Adjustment for Unreasonable Granting Authority Delays - Article 18.46
• Patent Term Adjustment for Unreasonable Curtailment - Article 18.48
• Protection of Undisclosed Test or Other Data- Article 18.50
• Biologics - Article 18.51
• Term of Protection for Copyright and Related Rights - Article 18.63
• Technological Protection Measures (TPMs) - Article 18.68
• Rights Management Information (RMI) - Article 18.69
• Protection of Encrypted Program-Carrying Satellite and Cable Signals - Article 18.79
• Legal Remedies and Safe Harbours - Article 18.82 and Annexes 18-E and 18-F

As it currently stands, Canadian law appears to already comply with many of the suspended provisions. Notable exceptions include provisions related to patent term extensions, data protection for pharmaceuticals and the term of copyright protection.

Suspension of Provisions Concerning Patents and Pharmaceuticals

Patent term extensions - Articles 18.46 and 18.48 of the TPP obligated signatories to provide patent term extensions for: (1) unreasonable granting-authority delays (i.e. by the Canadian Intellectual Property Office); and (2) in the case of patented medicines, unreasonable delays in marketing approval (i.e. by Health Canada). The Certificate of Supplementary Protection Regulations[5], which came into force on September 7, 2017, appear to bring Canada into compliance with the latter of these provisions.[6] However, Canadian law does not currently provide for extensions owing to delays arising from the Canadian Intellectual Property Office.

Data protection - Articles 18.50 and 18.51 of the TPP, which relate to data protection of new pharmaceutical products and biologics, were also suspended. Canadian law already provides up to eight years data protection for "innovative drugs" (which includes biologics) and thus appears to already comply with these provisions. However, it is unclear whether Canada would have chosen to adopt an optional provision set out in Article 18.50(2)(a) which provides up to three years data protection for new clinical information submitted for a new formulation, indication, or form (i.e. dosage form) of previously approved pharmaceutical products. Such data protection is currently not available in Canada.

Suspension of Provisions Concerning Copyright and Related Rights

Term of Protection for Copyright - The most notable suspension with respect to copyright is the suspension of Article 18.63 of the TPP, which relates to the term of copyright protection. The current term of protection for copyright pursuant to the Canadian Copyright Act is life of the author plus 50 years. Article 18.63 of the TPP required that the term of protection for copyright be extended to a term of not less than life of the author plus 70 years for works created by natural persons and to a term of not less than 70 years from the year of first authorized publication for works created by corporations.^[7] With the suspension of this provision, Canada is no longer obligated to extend the duration of copyright protection provided under Canadian law.