New Zealand: CPTPP introduces changes to New Zealand’s IP landscape
The Comprehensive and Progressive Trans-Pacific Partnership Agreement (CPTPP), also known as TPP-11 is a trade agreement between Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam. With seven participating parties now having ratified the agreement, the CPTPP has entered into force.
Following the withdrawal of the USA from the polarising Trans-Pacific Partnership Agreement (TPP) in January 2017, negotiations continued in Vietnam between the remaining 11 TPP member nations. The agreement was renamed the Comprehensive Progressive Trans-Pacific Partnership Agreement (CPTPP), with the suspension of 22 terms from the original TPP text. Over the course of 2018, the agreement was ratified by seven different countries and entered into force between those parties on December 30 2018.
In New Zealand, the CPTPP Amendment Act 2018 proposes a number of amendments to the Copyright Act 1994, Patents Act 2013, and Trade Marks Act 2002 consistent with the intellectual property (IP) chapters of the CPTPP, which entered into force on December 30 2018.
From close observation, the effects of the ratification of the CPTPP and its proposed changes to the IP laws in New Zealand appear to be relatively low-key. This article summarises the key amendments relating to the IP rights under the CPTPP agreement.
Grace period for patent applications
New Zealand will now be adopting a grace period of 12 months for public disclosures of an invention. This means that, effective from December 30 2018, any public disclosure of an invention one year prior to a patent filing date by the inventor or their assignee may be disregarded for the purposes of determining whether the invention is new.
The amended grace period provision is potentially great news for many innovators in New Zealand, especially small and medium sized enterprises, as the 12-month grace period will provide a safety net for inadvertent disclosures during this period.
However, potential patent applicants should still proceed with caution and use these grace period provisions as a fallback only, as in many cases it is still essential to file a patent application before any public disclosure of the invention, because several other countries (including China, Europe, and India) do not have equivalent grace periods.
Patent linkage regulates situations concerning the market approval process of generic drugs and the patent status of an originator product. The CPTPP patent linkage provisions require New Zealand to maintain a system that:
enables pharmaceutical patent holders to be notified that a generic version of their product has been submitted to Medsafe for approval to enter the New Zealand market; and
ensures there is sufficient time and opportunity for a patent owner to seek preliminary injunctions to resolve patent disputes before a generic version of its patented medicine enters the market.
The New Zealand Ministry of Foreign Affairs and Trade has commented that New Zealand's current laws and practices already meet these provisions through the information Medsafe publishes on its website, the availability of injunctive relief, and the time it takes Medsafe to process applications. It does not appear that any changes to New Zealand law are required to meet these obligations.
Data protection for agricultural chemicals
The CPTPP requires each party to provide 10 years of data protection for new agricultural chemicals. No changes to New Zealand law are required to meet this provision, as New Zealand already extended the data protection term for agricultural and veterinary compounds to 10 years in late 2016.
Digital rights, online copyright infringement, and copyright duration
The mandated extension of the copyright term (perhaps the most unpopular requirement of the IP provisions to the general public) has not been included in the CPTPP. Consequently, New Zealand retains its current copyright terms (set at 50 years, the life of the author plus 50 years, and, for certain industrially applied works, a term of either 25 or 16 years).
The CPTPP also does not include any changes to New Zealand's current laws protecting digital locks or digital rights management information. There is also no change to New Zealand's current regulation of internet service providers in relation to online copyright infringement.
The CPTPP maintains fairly rigorous border measures, which relate to the suspension of suspected counterfeit or pirated goods at our borders. New Zealand has already indicated its willingness to increase the powers available to customs officials. The CPTPP will now require powers for customs to act on its own initiative in order to temporarily detain suspected shipments (even in the absence of a formal request from right holders), and the extension of powers to goods destined for export and in transit.
Regulatory review exception
The CPTPP requires each party to provide an exception to patent rights that allows the use of a patented medicine to produce information required to seek regulatory approval of a generic version of that medicine. This exception is already covered by the current patent legislation in New Zealand.
The CPTPP requires an extension of moral and property rights New Zealand provides to performers, including musicians and actors, for the live communication of their performances as well as recordings made of those performances. This will bring performers' rights in line with those of other authors of copyright works. These rights include the right to be identified as a performer, to not have their work subject to derogatory treatment, and for consent to be obtained from the performer before copying, issuing, or providing copies of the performance to the public.
New Zealand will need to ensure its courts have the ability to award additional damages for trade mark infringement, in addition to the compensatory damages (or account of profits) already available. The CPTPP provides generally that judicial authorities must have the ability to order damages adequate to compensate for the injury of the right holder – this is already well established. More specifically, relating to trade mark counterfeiting, the CPTPP now also requires the potential for additional damages as considered appropriate by the court, having regard to all relevant matters, including the nature of the infringing conduct and the need to deter similar infringements in the future.
The CPTPP provides recognition for geographical indications (GIs), which are to be protected through a trade mark, sui generis, or other legal system. GIs are signs which identify goods as originating from a particular region that provides specific characteristics to those goods, such as Champagne. The CPTPP requires transparent procedures for protecting GIs. New Zealand is already well on track, following the implementation of the long awaited Geographical Indications (Wine and Spirits) Registration Act 2006 (GI Act), and accompanying regulations. Whether and how that system will be expanded to cover other GIs remains to be seen.
Traditional knowledge and traditional cultural expressions
There is a long history of debate regarding the legal treatment of traditional knowledge and traditional cultural expressions, which does not easily fit within any specific IP system (patent, trade mark, design, or copyright). The CPTPP encourages information sharing between the IP offices of the parties, and proposes examination processes that take account of traditional knowledge. For example, patent examination may include considering traditional knowledge as prior art. The CPTPP also permits parties to take specific measures for the preservation and promotion of traditional knowledge.