This document summarizes the key intellectual property rights affected by the Trans-Pacific Partnership (TPP) agreement, including patents, trademarks, copyright, industrial designs, and geographical indications. It outlines the TPP provisions relating to patentable subject matter, patent term extensions, data protection, biologics, trademark registration requirements, well-known marks, copyright duration, and industrial design harmonization. The TPP signatories recognize different approaches to geographical indication protection and enforcement measures include criminal sanctions for IP infringement and border measures.

1. IP of TPP
November 4th, 2015
Scott Foster, Partner

2. 2
Background
History/law
• Under the royal prerogative power of the federal
Crown, the Executive Branch of government has the
exclusive power to negotiate and conclude
international treaties, while Parliament has the
exclusive power to enact legislation to implement the
treaties.
• Agreement signed October 5, 2015. Once the treaty
was signed, Canada may not act in a way that would
defeat the treaty’s object and purpose. However, the
treaty is not legally binding until ratified.

3. 3
Background
History/law
• Canada will not typically ratify an international treaty
until measures are in place to ensure that its terms are
enforceable in domestic law.
• If domestic legislation is necessary, an implementation
bill is to be drafted, which is then tabled in Parliament
and goes through the parliamentary legislative
process.

4. 4
Background
History/law
• Once the federal government is satisfied that the
treaty’s obligations will be met by domestic legislation,
the Minister of Foreign Affairs is authorized to sign an
“Instrument of Ratification or Accession”. Once this
instrument is deposited with the appropriate authority,
the treaty is officially ratified.
• Treaties come into force either on a specified date or
when specified terms and conditions, such as
ratification by a minimum number of states, have been
met.

5. IP rights affected
• Patents
• Trademarks
• Copyright
• Industrial designs
• Geographical Indications
• Enforcement measures
5

6. Patents
Industrial application (E.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.”
6

7. Patents
Unreasonable delays (E.12)
“If there are unreasonable delays in a Party’s issuance
of patents, that Party shall provide the means to, and
at the request of the patent owner, shall, adjust the
term of the patent to compensate for such delays.”
7

8. Patents
Patent term extensions (E.14)
“With respect to a “pharmaceutical product” that is
subject to a patent, each Party shall make available an
adjustment of the patent term to compensate the
patent owner for unreasonable curtailment of the
effective patent term as a result of the marketing
approval process.”
8

9. Patents
Data/marketing approval (E.16/E.20)
“For the purposes of Article QQ.E.16.1, a new
pharmaceutical product means a pharmaceutical
product that does not contain a chemical entity that
has been previously approved in the Party.”
9

10. Patents
Biologics (E.18)
(a) with respect to the first marketing approval… of a new
pharmaceutical product that is or contains a biologic, provide
effective market protection …for a period of at least 8 years from
the date of first marketing approval of that product in that Party;
or
(b)… provide effective market protection: …for a period of at
least 5 years from the date of first marketing approval of that
product in that Party; (ii) through other measures; and (iii)
recognizing that market circumstances also contribute to
effective market protection to deliver a comparable outcome in
the market.
10

11. Trademarks
Non-traditional marks (C.1)
“No Party may require, as a condition of registration,
that a sign be visually perceptible, nor may a Party
deny registration of a trademark solely on the ground
that the sign of which it is composed is a sound.
Additionally, each Party shall make best efforts to
register scent marks. A Party may require a concise
and accurate description, or graphical representation,
or both, as applicable, of the trademark.”
11

12. Trademarks
Collective marks (C.2)
“Each Party shall provide that trademarks shall include
collective marks and certification marks. A Party is not
obligated to treat certification marks as a separate
category in its domestic law, provided that such marks
are protected. Each Party shall also provide that signs
that may serve as geographical indications are
capable of protection under its trademark system.”
12

13. Trademarks
Well known marks (C.5)
“Each Party shall provide for appropriate measures to
refuse the application or cancel the registration and
prohibit the use of a trademark that is identical or
similar to a well-known trademark, for identical or
similar goods or services, if the use of that trademark
is likely to cause confusion with the prior well known
trademark.”
13

14. Trademarks
Nice Classification
“Each Party shall adopt or maintain a trademark
classification system that is consistent with the Nice
Agreement Concerning the International Classification
of Goods and Services for the Purposes of the
Registration of Marks of June 15, 1957, as revised and
amended.”
14

15. Trademarks
Term of trademarks
“Each Party shall provide that initial registration and
each renewal of registration of a trademark shall be for
a term of no less than 10 years.”
15

16. Copyright
Duration of copyright protection (G.6)
“Each Party shall provide that, where the term of
protection of a work (including a photographic work),
performance, or phonogram is to be calculated on the
basis of the life of a natural person, the term shall be
not less than the life of the author and 70 years after
the author’s death;
16

17. Copyright
Marrakesh treaty (G.17)
“Each Party shall endeavor to …facilitat[e] access to
published works for persons who are blind, visually
impaired, or otherwise print disabled.”
17

18. Industrial designs
Hague Agreement Concerning the International
Registration of Industrial Designs (F.2)
“The Parties recognize the importance of improving
quality and efficiency in their industrial design
registration systems, as well as facilitating the process
of cross border acquisition of rights thereof including
giving due consideration to ratifying or acceding to
Hague Agreement Concerning the International
Registration of Industrial Designs (1999).”
18

19. Geographical indications
Gis (D.1)
“The Parties recognize that geographical indications
may be protected through a trademark or sui generis
system or other legal means.”
19

20. Enforcement measures
Combating Counterfeit Products Act
• Criminal sanctions for trademark and copyright
infringement.
• Border measures
20

21. Thank You
montréal  ottawa  toronto  hamilton  waterloo region  calgary vancouver  beijing  moscow  london
Scott Foster
Tel: 604-891-2294
Email: scott.foster@gowlings.com