CPTPP v TPP - from the IP perspective
Updated: Jan 7, 2019
The Trans-Pacific Partnership Agreement (TPP) was a trade agreement signed by Malaysia, United States of America, Brunei, Canada, Chile, Japan, Mexico, New Zealand, Peru, Singapore and Vietnam. When Donald Trump was elected as the US President, he signed a Presidential Memorandum to withdraw the US from the TPP. The remaining 11 nations acknowledged the economic and strategic importance of TPP, particularly as a vehicle for regional economic integration, and convened several times to find ways to implement the TPP.
On 8th March 2018, the remaining 11 nations signed a variation of the TPP and renamed the trade agreement "Comprehensive and Progressive Agreement for Trans-Pacific Partnership" (CPTPP). The new CPTPP contains the original TPP terms with suspension of some provisions. This article discusses some of the differences between the CPTPP and TPP and the effect of some of the terms affirmed by the CPTPP in relation to Malaysian IP law and practice.
PART 1 - What was suspended
Chapter 18 of the TPP originally provided for terms relating to IP which would cause significant changes to the IP law and practice in Malaysia. This part discusses some of the terms that were suspended by the CPTPP within Chapter 18 and the effect of such suspension.
Scope of patentability will not be extended
With the suspension of Article 18.37.2, it is no longer mandatory to make patents available for inventions claimed as new uses of a known product, new methods of using a known product, or new processes of using a known product. However, please take note that the Malaysian Court has recognised Swiss-type patent claims to be patentable pursuant to existing provision under the Patents Act.
With the suspension of the last paragraph of Article 18.37.4, it is no longer mandatory to extend the patentability of inventions to include inventions derived from plant.
No patent term adjustment
With the suspension of Article 18.46 and Article 18.48, Malaysia will not be introducing new provisions relating to patent term adjustment due to unreasonable administrative delay in issuing a patent or in marketing approval process for pharmaceutical products.
No data exclusivity obligations for pharmaceutical products, including biologics
Please take note that Malaysia already has existing policies relating to data exclusivity where the relevant party may apply to the Director of Pharmaceutical Services for data exclusivity provided that the requirements are satisfied. The Director of Pharmaceutical Services had issued a Directive on Data Exclusivity under the Control of Drugs and Cosmetics Regulations 1984 in February of 2011 which has been in force since 1st March 2011. With the suspension or Article 18.50 and Article 18.51, it is no longer mandatory for Malaysia to amend its existing practice in relation to data exclusivity.
Copyright term of protection remains the same
The CPTPP suspended Article 18.63 of the TPP. Article 18.63 of the TPP required that the term of copyright protection shall not be less than the life of the author and 70 years after the author’s death. With the suspension, the duration of copyright protection in Malaysia will be maintained to be the life of the author and 50 years after the author’s death.
No changes to laws relating to technical protection measure or right management information
Malaysia has existing provisions relating to circumvention of technological protection measure and rights management information under the Copyright Act. With the suspension of Article 18.68 and Article 18.69, it is unlikely that the existing provisions will be amended.
No obligation to introduce new laws relating to protection of encrypted program-carrying satellite and cable signals
There are existing provisions under the Communications and Multimedia Act which generally prohibits the manufacture and use of a device for altering or modifying any equipment, device or apparatus to obtain unauthorised access to any network service, applications services or content applications service. With the suspension of Article 18.79, it is unlikely that Malaysia will amend its laws to provide further protection of encrypted program-carrying satellite and cable signals.
No changes to the law governing liability of Internet Service Provider (ISP)
Malaysia has existing provisions under the Copyright Act pertaining to limited liability of ISP. In light of suspension of Article 18.82, Annex 18-E and Annex 18-F, it is unlikely that the existing provisions will be amended.
PART 2 - Terms that were affirmed
This part discusses some of the terms that were affirmed by the CPTPP and the effect on Malaysian IP law and practice.
Possible extension of scope of Trade Mark
Article 18.18 provides that there shall not be a condition of registration for a sign to be visually perceptible and particularly, a trade mark registration shall not be denied if the only ground for refusal is that the sign is a sound.
The existing provisions under the Trade Marks Act defines a “mark” to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof. Section 3(2)(a) further provides that references to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark. Hence, it is likely that Malaysia will amend the Trade Marks Act to allow registration of marks which are not visually perceptible such as sound and olfactory marks.
Possibility of an administrative enforcement action under the Patents Act
Article 18.72 provides that in connection with commencement of civil or administrative enforcement proceeding involving a patent that has been granted, each claim of the patent shall be considered prima facie to satisfy the applicable criteria of patentability. As it stands now, there are no administrative enforcement proceeding involving a granted patent and there is a likelihood that such administrative enforcement proceeding would be introduced into the Patents Act.
Sanctions for disclosing confidential information produced or exchanged in civil proceedings
Article 18.74 provides that in relation to a civil judicial proceeding, the judiciary shall have the authority to impose sanctions on a party, counsel, experts or other persons for violation of judicial orders concerning the protection of confidential information produced or exchanged in that proceeding. As it stands now, the only way for such sanction to be ordered is by way of contempt proceedings or breach of undertakings given by related parties. There is a possibility for provisions to be introduced in relation to power to make such sanctions.
Possible amendments to border measure provisions
Article 18.76 provides that requirements to provide information under border measure provisions shall not unreasonably deter recourse to such procedure. The existing border measure provisions in the Trade Marks Act have never been invoked before possibly due to the requirement for detailed information relating to the shipment of counterfeit goods. It would be interesting to see if these border measure provisions will be amended to ease the requirements under the existing provisions.
*Please take note that this article merely highlights certain provisions and should not be taken as an exhaustive list of terms of the TPP suspended or affirmed.
The author is one of our partner practising in intellectual property. If you require further information or assistance, he can be contacted at firstname.lastname@example.org.