Trans Pacific Partnership IP Chapter

The final draft document for the Trans Pacific Partnership (TPP) agreement intellectual property chapter has apparently been provided by Julian Assange at WikiLeaks.

Some highlights:

Article QQ.E.1:

  1. Subject to paragraphs 3 and 4, each Party shall make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step, and is capable of industrial application.
  2. Subject to paragraphs 3 and 4 and consistent with paragraph 1, each Party confirms that patents are available for inventions claimed as at least one of the following: new uses of a known product, new methods of using a known product, or new processes of using a known product. A Party may limit such processes to those that do not claim the use of the product as such.
  3. Each Party may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to nature or the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. Each Party may also exclude from patentability: diagnostic, therapeutic, and surgical methods for the treatment of humans or animals; animals other than microorganisms; and essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes.
  4. Each Party may also exclude from patentability plants other than microorganisms. However, consistent with paragraph 1 and subject to paragraph 3, each Party confirms that patents are available at least for inventions that are derived from plants.

Article QQ.E.11: {Publication of Patent Applications}

  1. Recognizing the benefits of transparency in the patent system, each Party shall endeavor to publish unpublished pending patent applications promptly after the expiry of 18 months from the filing date or, if priority is claimed, from the priority date.
  2. Where a pending application is not published promptly under paragraph 1, Parties shall publish such application or the corresponding patent as soon as practicable.
  3. Each Party shall provide that an applicant may request the early publication of an application prior to the expiry of the period mentioned in paragraph 1.

Remedies:

6. Each Party shall ensure that its judicial authorities shall have the authority to order a party at whose request measures were taken and who has abused enforcement procedures with regard to intellectual property rights including … patents, copyright and related rights, and industrial designs, to provide the party wrongfully enjoined or restrained adequate compensation for the injury suffered because of such abuse. The judicial authorities shall also have the authority to order the applicant to pay the defendant expenses, which may include appropriate attorney’s fees.

The provisions on Pharma, Ag, Biotech Data Protection, and Trade Secrets need further analysis.

– DC

71 thoughts on “Trans Pacific Partnership IP Chapter

  1. Perhaps bound is not the right word, but if you are looking for jurisprudence on the meaning of industrial application, it won’t be American.

    1. Alun

      Article QQ.E.1 para 1 is explained by footnote 33, which Dennis omitted:

      “For purposes of this Section, a Party may deem the terms “inventive step” and “capable of industrial application” to be synonymous with the terms “non-obvious” and “useful”, respectively. In determinations regarding inventive step (or non-obviousness), each Party shall consider whether the claimed invention would have been obvious to a person skilled or having ordinary skill in the art having regard to the prior art.”

      The USA is already a party to the TRIPs agreement. TRIPs Article 27 has similar language to QQ.E.1 para 1. The first sentence of footnote 33 above is taken from TRIPs footnote 5.

    1. Lol – maybe, but maybe other traps await.

      I still would love to see those “objective physical structure” claims.

      Wouldn’t you?

    2. But that’s just it, Malcolm. Just what subject matter is eligible/patentable under the TPP? Many (including you, I daresay) would say that the blue ball is not.

      You get a higher standard game of squash (proven fact) when you use a blue rather than a black ball, precisely because your brain can assimilate the flight path of the ball faster (proven fact) when it is blue. Why is that not an invention in a field of technology, a useful art?

      As the Headnote to the UK patent attorney qualifying exam warns. Points are awarded not for the conclusions reached but for the reasoning leading to those conclusions.

      anon seemns to be saying that it’s because he just can’t see any objective physical structure. I would advise him to stay out of any squash court. He might get hurt if he ventures in to one. Because he can’t see the ball, even when it’s heading straight for his one eye.

      1. You get what “I seem to be saying” de@d wrong MaxDrei.

        I am picking on Malcolm and his little pet phrase of “objective physical structure” because it is Malcolm (and no one else) that continuously makes that phrase an issue with his attempts to turn an optional claim format into a de facto only legally valid claim format.

        Also, see my comment on the internet sensation “blue dress,” and please realize that your simple “ball is blue” claim really won’t be that simple – the “Gist” of what you are claiming is not the color itself, an item that apparently is dependent on more than just the ball’s reflective wavelength, but instead is “directed to” a result that is achieved by certain conditions (including lighting effects outside of your claim.

        1. anon, you set me wondering about inventions in colour in environments other than the obligatory invariant plain flat white-walled space in which the game of squash racquets is played. For example, going back to the early days of motoring, how about if I invent a new, not obvious and useful “traffic light” with a red light, a green light and an amber light in between. Useful arts? What would you say? How precisely must I define the wavelengths of the light before my claim meets S 112?

          As to “objective physical structure”, that you went on and on about, I never grasped that it was absolutely only Malcolm that ever used that phrase.

          1. I am super glad that my comment has “set you wondering.”

            I do wonder though with your reply on traffic lights if you mean to imply some type of (unstated) factual basis of the chosen colors.

            “Green” as “go”
            “Yellow” as “caution” and
            “Red” as “stop”

            …may have “factual” basis (or may not).

            …any such basis may (or may not) be grounded in the Useful Arts.

            Precision of any such wavelength …

            …well, that kind of ties to the initial question I put to you. I will let you provide more details on the discussion points already on the table before I venture into an answer for you.

            The floor is yours.

  2. …and yet more selective viewpoint editing – what, pray tell, was objectively “wrong” with the post removed?

    One set of rules – evenly applied – apparently, that is too difficult to achieve the “desired” narrative.

  3. Further to Egon’s question, what do we make, if anything, of the fact that Article QQ.E.1 paragraph 3 is silent as to any exception like “abstract ideas,” algorithms, mathematical formulas, software? MaxDrei seems to be speaking to the state of the law of patent eligible subject matter in the EPO, but what about construction of this TPP provision specifically? It seems like a glaring omission, especially since the list only enumerates what each Party “may exclude.”

    1. What do we make of it, you ask. What I make of it is that the purpose of the International Agreement is to prevent single countries blocking off subject matter from patentability. New and inventive molecules, per se, for example.

      Precisely for that reason, the TPP provision is expressed in terms of what is the minimum range of subject matter that “shall” be patentable.

      If an abstract idea is not a field of technology, TPP countries can decide for themselves, whether to allow it to be patented, or not. If an abstract idea were itself a field of technology, then all TPP member States would have to allow it to be patented.

      So is an “abstract idea” itself a “field of technology”? You tell me.

      1. Or to be more precise (nitpicking, but that is what we do as lawyers), is the abstract idea an invention “in” the field of technology. But I get your point that Parties applying an “abstract idea” exception in their jurisdictions could do so by saying “abstract ideas” fall *outside* paragraph 1 (“shall make patents available for any invention . . . in all fields of technology”), as opposed to falling *within* the permitted exclusion of paragraph 3.

        For some of the “abstract idea” claims that the U.S. courts and Patent Office are excluding of late, some might argue that they are clearly inventions “in” the field of technology of computing devices, because they use computing devices to do something a computing device hasn’t done before. But I suppose the U.S. standard wriggles free by saying no, this stuff we are excluding is not “in” the field of computing devices – it is merely incidentally “using” the computing devices as insignificant extra-solution activity (or extra-solution structure in the case of device/system claims being rejected).

          1. Wookie, consider a coffee mug with novel and inventive matter visible on its external surface. Clearly a coffee mug is something useful within a field of technology, so shouldn’t it ought to be patentable, provided it embodies new and inventive subject matter (like a clever and brand new visual joke)?

            If not, why not?

            1. Awwww, I liked your blue raquetball example better…

              😉

              As for your coffee mug, compare and contrast mere non-useful arts type of external surface items and the measuring cup case external surface.

              1. (the joke of course, being your rather purposeful and obtuse attempt to insert non-useful art matter into a patent example)

                But you already knew that – because at least in part, I have already told you that)

            2. I immediately thought of the “nonfunctional descriptive material” provision of the US MPEP, section 2111.05:

              “USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate.”

              Not necessarily an answer to your question of “why” but indicates the mechanism that the USPTO would use to ignore the printed matter in your proposed mug claim.

              Interestingly, the section also addresses “machine-readable media,” prescribing that “the examiner should first look to the relationship between the progamming and the intended computer system. Where the programming performs some function with respect to the computer with which it is associated, a functional relationship will be found” (providing the example of a medium programmed with attribute data objects that “facilitat[e] retrieval, addition, and removal of information in the intended computer system”). Conversely, where “the claim as a whole is directed to conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists.”

              It is interesting how this section can be used to dissect (or should we be saying amputate?) printed matter (by disregarding its effect on scope), whereas on the flip side, the 101 “insignificant extra-solution activity[/structure]” analysis stemming from Parker v. Flook is used to remove the solid, tangible stuff. I am probably not the first person to make that observation.

              1. Wookie, anon is referring to another test case of mine, the one where the claim reads: “Squash ball, colour blue.”

                The specification explains how, in a white-walled squash court, players can pick up the flight of a blue ball faster than they can a conventional black one. The inventor cites DoD research conducted amongst pilots of fighter aircraft, that proves it.

                No doubt about it, with a blue ball, you get a higher standard game of squash. Now, is the blue squash ball an invention in some or other “field of technology”, Yes or No, and why?

                1. But, Max, is a blue ball better or worse than black ball? If one’s objective is to hit the ball so that his opponent misses, then the blue ball is worse.

                  Consider the claim to nothing: I claim the missed squash ball.

                  Like the programmed computer, it exists at a moment in time depending on the striking of the squash ball (loading of the program) and the “missed” swing by the opponent (turning off of power to the computer).

                  Does the fact that the missed squash ball is the “state” of a game, like the state of a computer, any reason to deny it patentability?

              2. Ned: is a blue ball better or worse than black ball?

                That would depend highly on the environment in which the ball is being used, and the purpose of the ball’s use.

              3. Patent Wookie: It is interesting how this section can be used to dissect (or should we be saying amputate?) printed matter (by disregarding its effect on scope), whereas on the flip side, the 101 “insignificant extra-solution activity[/structure]” analysis stemming from Parker v. Flook is used to remove the solid, tangible stuff. I am probably not the first person to make that observation.

                You’re at least five or six years behind the curve, at least as far as this blog is concerned. Welcome to the discussion.

            3. Inventive matter visible …

              Define this a bit more, Max. Are we suggesting invention can be in the meaning of word?

              Are we suggesting patents on designs?

              Are we suggesting novel structure visabily attached to the surface?

              So the cup contains E=MC*2, or something to the same effect, visible on its surface. Can we patent E-MC*2, but limited to being visibly attached to a surface?

              In Europe, this is what passes as invention?

              1. Ned in Europe what passes as patentable is a new and useful combination of technical features that solves an objective technical problem in a non-obviuous way.

                The coffee mug example is a way to tease out when some new, useful and not obvious article of commerce is, nevertheless, not patentable.

                The visible matter might be for example, a joke about coffee, or some coffee-drinking regime that maximises the benefits of coffee and minimises any adverse effects coffee has on health. A therapeutic coffee mug, if you will.

                1. MaxDrei,

                  I do not think that you are being precise enough with your use here of “useful.”

                  The literary arts, especially including humor, are simply NOT the type of useful that apply – at the onset – in ANY discussion of patent law utility.

                  This is not a new view, and should not surprise you (or anyone).

                  Why then, does the attempt to cloud the issue (rather than attempts to bring clarity) CONTINUE to arise – from the sAmeones with the repeated attempts to insert such non-useful art examples into the “dialogue?”

                  Is this not a fair question? Can we not all agree to try to bring the proper clarity in our advocacy efforts?

                2. My new coffee mug invention has a therapeutic effect. Therapy that makes you feel better; that’s “technical. As we all know, laughter is the best medicine.

                  Only kidding.

                  But there’s a serious point, namely, how at bottom, at a fundamental level, to decide (in any jurisdiction) which new and useful things provide a contribution to the useful arts.

                  Ned, the blue squash ball uses non-obvious means to solve a technical problem. In my book, that’s the essence of patentability, in any jurisdiction.

                3. What makes me “feel better” is when people do not try to obfuscate the Useful Arts with mundane attempts at inserting non-useful arts into patent discussions.

                  Any time I see someone trying to insert a “writing on the outside of a coffee mug” example, I know that I am NOT dealing with someone who is serious about the topic.

                4. “anon” : Any time I see someone trying to insert a “writing on the outside of a coffee mug” example, I know that I am NOT dealing with someone who is serious about the topic.

                  LOL.

                  Because “serious” people don’t discuss the fundamental issues. They dance around the edges and cry crocodile tears on behalf of their poor, poor — oh so poor and persecuted! — clients.

                5. Clearly, my post has nothing whatsoever to do with “dance around the edges and cry crocodile tears

                  Clarity on fundamental issues is my aim – the opposite of your “suggested” “don’t discuss

  4. “Article QQ.E.11: {Publication of Patent Applications}
    1.Recognizing the benefits of transparency in the patent system, each Party shall endeavor to publish unpublished pending patent applications promptly after the expiry of 18 months from the filing date or, if priority is claimed, from the priority date.”

    Does this mean that US applicants will no longer be allowed to request non-publication?
    Will pending applications with non-publication requests be published anyway?
    Will the administration by treaty skewer patent applicant’s potential trade secret rights?

      1. There might be some wiggle room. but I don’t think “endeavor” means “the applicant can opt out, in which case we’ll make no endeavor at all”.

        1. Sure – but it could certainly mean, “the applicant must forfeit any international IP protection as the price of opting out,” or some such.

          1. What percentage of applicants who opt out of publication are thinking “I’d really like to file a foreign application, but it means my invention will be published at 18 months, so I’ll reluctantly forfeit international protection”.

            What percentage of that percentage think “Obviously the foreign patent office would publish it at 18 months. I can accept that, but the real thing I want to avoid is that the USPTO would publish it as well. So I’ll reluctantly forfeit international protection”?

            And what percentage thinks “I’ve no interest in international protection, so forfeiting it is no problem”?

            I suggest that a high percentage of those who opt out of publication fall in that third category.

            In what way do you think the USA would be “endeavoring” to publish all applications at 18 months, if all it did was to tell people that if they opt out they will forfeit something that most of them don’t want anyway?

            1. IPMan, Bravo to you. You do seem to understand first principles in patent law. But most patent attorneys just seem to be puppets on string, obeying their masters and refusing to even think.

              1. Not sure to whom you think this “obeying without thinking” is directed to, but the irony of you saying this is pretty high.

                Notwithstanding that, I routinely counsel clients as to the merits of filing with non-publication requests with a calendared review as to any change in desire to foreign filings at the appropriate (later) times.

                What the thinking man realizes is that there exists a liberal ability to change one’s mind as to foreign filing within certain timeframes, and that a default of non-publication is fairly easy to manage.

                Lastly, what happens as to non-publication and foreign filing is less a matter of “unthinking” obedience to a client’s desires and a proper realization that this is entirely the call of the client.

                Methinks Ned that you have been in house and not in the prosecution game for too long.

    1. I think there is a difference between endeavoring to do something and doing something. So, no, that’s not what it means.

      Remember what the Dagobain said: No! Do or do not. There is no endevoring.

    2. “Recognizing the benefits of transparency in the patent system…”

      The people who wrote that not only do not get it, but they are fundamentally not in favor of promoting the progress of the useful arts. They transparently intend to promote the progress of piracy.

      But also illustrates a problem in the patent law in that prior art should never encompass that which is secret. Patents should not be prior art as of their filing dates — end of conversation.

      We must all recall that Milburn was based upon prior invention. Since prior invention is no longer important in a first-to-file system, there is no reason left to retain the Milburn concept in the patent laws of the United States. None!

      Putting 102(e) into the statute in the first place was a grievous mistake. Retaining it in the AIA is mistake equally as large.

      1. But also illustrates a problem in the patent law in that prior art should never encompass that which is secret…

        Putting 102(e) into the statute in the first place was a grievous mistake. Retaining it in the AIA is mistake equally as large.

        See “The Soliloquy.”

        New to you is now, in fact, new. The AIA does now break the (improper) tie between the different times of protection of trade secret and of patent protection.

        We have had this discussion.

        1. anon, regarding everything but patent applications (and perhaps, on sale) the AIA does take a positive step to restore the status quo ante on prior art.

          But patents/application being prior art as of their filing dates? This is tantamount to preserving “first to invent” in the law because Milburn was all about prior invention – not about prior art. Making prior invention prior art was and is a mistake because prior invention was about two people claiming the same invention while prior art concerns not only what is in the public domain but what is effectively in the public domain because the differences between what is claim and what is in the public domain is insubstantial – obvious to one of ordinary skill in the art.

          Also I hope you agree that the requirement to publish applications is really not in the interest of inventors, and exists in American law only because patent applications are prior art. The mistake was made in 1952 when we Inc. 102(e) into the statute. That mistake should have been corrected by the AIA. Instead it was multiplied.

          The crafters of the AIA are not to be congratulated.

  5. “Subject to paragraphs 3 and 4, each Party shall make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step, and is capable of industrial application.”

    Whoo Hoo!

    1. Why the whoop, when this formulation is unchanged from GATT-TRIPS? Nothing has changed. Unless the TPP is somehow of higher rank than GATT-TRIPS.

  6. We should have been analyzing/discussing these issues 3 years ago.

    One more reason why the Pope should beautify Julian Assange. Then Edward Snowden.

    And for all of you who voted for Obama based on his promises of transparency in government . . . Hahahahaha.

    1. Beautify him? I guess. Like most of us, he could use a good makeover–starting with his hair. Still, I think the Pope has more pressing issues to deal with.

    2. Shoulda’ googled that word. Or been raised Catholic.
      My religious lexicon is sooo limited.

      The Pope should kosher them is what I was trying to say.

      thx slaf

  7. I can make no sense of this phrase”and essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes.” How is a biological process ever non-biological? And what biological process is not in some sense microbiological? Even the largest organism works through processes in its cells and all fermentations work at a cellular level.

    And how is anyone “treated” with a diagnostic method. In the normal sense of words doesn’t diagnostic exclude treatment. One can envision and there are in vivo diagnostic methods such a colonoscopy that are performed on or in a person, but they are not reasonably termed “treatment” or therapy.

    1. Sorry Lawrence, that you can make no sense of any of it. Perhaps it would help, to familiarize yourself with the established jurisprudence of the Boards of Appeal of the EPO, just like the rest of the world increasingly does, these days. The Boards have been construing since 1978 exactly these words, which are to be found in the European Patent Convention of 1973. They might not be 100% clear but they are not insolubly ambiguous, and are clear enough to be construed.

      1. Max, thanks for the direction. You are indeed correct that there has been quite extensive jurisprudence developed to interpret this phraseology. But wouldn’t it make sense to try to distill some wisdom from those cases of the Enlarged Board and import it into the wording of the Convention?

    2. “And how is anyone “treated” with a diagnostic method. In the normal sense of words doesn’t diagnostic exclude treatment. One can envision and there are in vivo diagnostic methods such a colonoscopy that are performed on or in a person, but they are not reasonably termed “treatment” or therapy.”

      One isn’t. However, that is not what the sentence from which you snipped says. Instead it says: “Each Party may also exclude from patentability: diagnostic, therapeutic, and surgical methods for the treatment of humans or animals; animals other than microorganisms; and essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes.”

      I respectfully submit that any diagnosis is FOR the treatment of something, unless of course there is no treatment. So, a method of diagnosing strep throat is for the treatment of strep throat.

      1. Does this mean that any diagnostic method for a condition for which there is a treatment can be excluded from patentability?

        1. How interesting, that the TPP differs from the text of EPC Art 53, which recites:

          “…methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body;”

          Does the difference matter? Was it deliberate? If so, why?

          Or was it the case of the EPC first going in translation into the patent laws of Pacific Zone countries, and then, later, coming back out again, back into English, for inclusion in the TPP?

          1. The wording of Article 27.3(a) TRIPS is identical to the TPP provision. Have not found any explanation of the current wording. Apparently, in the Brussels draft for TRIPS, “diagnostic, therapeutic, and” was between brackets and the language may have never been polished up after the decision was made to also allow exclusion of diagnostic methods.

          1. Does allowing signatories to exclude in vitro diagnostic methods from patentability make any policy sense? Is there a rationale behind such an exclusion or is it just an unfortunate word or phrasing choice carried forward from 27(3)(a) of TRIPS?

            1. I you want countries to sign a treaty and some refuse to sign if it doesn’t let them exclude X, you might put in a few lines that lets them exclude X. That would be the rational.

  8. I’d like your take on whether this treaty helps consumers at all, or whether it helps patent holders (business) to make more money off consumers. Something other than ‘A stronger patent system encourages innovation which helps everyone’. For example, it is my understanding that the copyright sections ‘strengthen copyright protection’ by basically keeping everything out of the public domain for a much longer time (because 75 to 100 years isn’t enough). How about patents in that regard? After all, 99.99% of Americans are consumers, not businesses, and isn’t the treaty supposed to benefit the country as a whole?

  9. “. . . each Party shall make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step, and is capable of industrial application.”

    Do these words necessarily include, or do they exclude, methods of doing business? Software?

    1. That depends, dear Egon, on who you ask. From the EPO, for example, you get a nuanced answer. Subject matter you would tend to classify as a business method or software can be patented in Europe when the claimed subject matter used technical features to solve a technical problem in a non-obvious way. That’s despite the EPC Art 52 prohibition on patents for methods of doing business or programs for a computer.

      And that in turn is because the prohibition in the statute is construed narrowly, only excluding the ineligible matter to the extent that the claim is directed to it, as such.

      For other jurisdictions, I couldn’t say, except that on issues like this the rest of the world these days tends to follow the established jurisprudence of the EPO. I know. Shocking isn’t it?

        1. I didn’t say that anything “changes that”. All I was doing was explaining that the reason for the words in the TPP is the EPC. After all, if you think about it a bit, the TPP does concern more “sovereigns” than just the USA.

          1. Given the “permissive” language, whether or not multiple sovereigns are involved is rather besides the point that I make with the absence of the “per se” and “as such” language in the US sovereign.

            Here, MaxDrei, such opens the door (widely) – per the actual words of Congress, the single branch authorized to write the statutory law that is patent law.

            See also the comment at 7.

    2. Well, there is such a thing as a Financial Industry and I assume and believe the methods of doing business are capable of Financial Industry application. So…..

      1. Indeed. I thought I might be the first to argue before the USPTO that software patents are capable of industrial application. I’m clearly not the first person to think of it, and it looks as if the USPTO may now be bound by EPO decisions. That will upset a lot of Americans.

        1. Alun, explain your thinking further, can you. When not even the English courts are “bound” by EPO Decisions, what leads you to suppose that a Patent Office in DC will ever be “bound” by them.

          Influenced by the EPC jurisprudence though. That’s another matter. Isn’t there some text, somewhere in the AIA, about the intent of the legislature including to harmonise with other jurisdictions?

        2. I think you are placing the blame in the wrong place. The USPTO was happy to issue patents containing method claims directed to data processing. It was the courts that started issuing pronouncements about abstract ideas, rewriting 35 USC 101 and apply 101 as if it were 102 and 103 without the need to show some evidence of anticipation and obviousness.

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