Combating the Anti-trade Movement: Evaluating the Trans-pacific Partnership's Place in International Patent Law

• Jurisdiction: United States,Federal
• Citation: Vol. 24 No. 1
• Publication year: 2016

Combating the Anti-trade Movement: Evaluating the Trans-Pacific Partnership's Place in International Patent Law

William G. Adams

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NOTES

COMBATING THE ANTI-TRADE MOVEMENT: EVALUATING THE TRANS-PACIFIC PARTNERSHIP'S PLACE IN INTERNATIONAL PATENT LAW

William G. Adams^*

Table of Contents

I. Introduction.............................................................................................77

II. Background................................................................................................79

A. PATENTABLE MATERIAL UNDER THE UNITED STATES' DOMESTIC PATENT PROVISIONS..........................................................79
B. RIGHTS CONFERRED TO PATENT HOLDERS IN THE UNITED STATES......................................................................................................82
C. POTENTIAL REMEDIES IN THE UNITED STATES FOR PATENT INFRINGEMENT......................................................................................82
D. PATENTABILITY PROVISIONS UNDER TRIPS AND NAFTA................83
E. RIGHTS CONFERRED TO PATENT HOLDERS UNDER TRIPS AND NAFTA..............................................................................................84
F. DOMESTIC ENFORCEMENT OF PATENT PROVISIONS UNDER TRIPS AND NAFTA...................................................................................85
G. INTERPRETATION OF TRIPS PROVISIONS BY THE DISPUTE SETTLEMENT BODY OF THE WTO........................................................86
H. UNITED STATES TRADE PROMOTION AUTHORITY AND THE IMPLEMENTATION OF THE TRANS-PACIFIC PARTNERSHIP.............88

III. Analysis.........................................................................................................90

A. FINAL TERMS OF THE TRANS-PACIFIC PARTNERSHIP INTELLECTUAL PROPERTY CHAPTER ON PRODUCT PATENTABILITY......................................................................................90

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B. IMPORTANCE OF EXCEPTIONS TO PATENTABILITY UNDER THE TPP FOR ALLEVIATING CONCERNS ABOUT PUBLIC HEALTH....................................................................................................92
C. FINAL TERMS OF THE TRANS-PACIFIC PARTNERSHIP ON ENFORCEMENT OF PATENT PROVISIONS...........................................93
D. ECONOMIC BENEFITS THAT WILL ACCRUE TO THE UNITED STATES UNDER THE PATENT REGIME IN THE TRANSPACIFIC PARTNERSHIP...........................................................................95
E. THE TPP IS DEAD. LONG LIVE THE TPP.............................................97

IV. Conclusion..................................................................................................98

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I. Introduction

The Trans-Pacific Partnership (TPP) is a free trade agreement among twelve Pacific Rim countries: Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States, and Vietnam.¹ Each of these countries is also a signatory of the Agreement on Trade Related Aspects of Intellectual Property (TRIPS), which currently provides the international intellectual property standards.² Despite failing to reach an agreement during the negotiations in July 2015,³ the countries met again in September 2015 to continue efforts to finalize the treaty.⁴ On October 5, 2015, the twelve countries announced that the treaty had been finalized, although the final version of the treaty was not signed at that time.⁵ After the TPP was finalized, the United States Trade Representative released the final text of the Intellectual Property Chapter.⁶

The TPP contains a wide range of provisions on traditional trade topics, such as tariffs, non-tariff barriers, intellectual property, and dispute settlement, and on a number of non-traditional trade topics, such as labor, telecommunications, and e-commerce.⁷ The wide variety of topics the treaty addresses and the non-transparent manner in which negotiations have been conducted have fueled the controversy surrounding the treaty.⁸

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Despite the controversy surrounding the TPP, this agreement follows other significant trade agreements in covering intellectual property. The North American Free Trade Agreement (NAFTA), which was implemented in 1994, was an agreement among the United States, Mexico, and Canada.⁹ The NAFTA provisions provided that patents be made available "for any inventions, whether products or processes, in all fields of technology, provided that such inventions are new, result from an inventive step and are capable of industrial application."¹⁰ Additionally, NAFTA sought to protect trade by ensuring that intellectual property rights, including patent protections, were not enforced so as to offer protection to domestic products.¹¹ As a result, the United States had to permit reliance on activities occurring in other NAFTA countries to prove a date of invention and adopt a twenty-year patent term.¹² Since the implementation of NAFTA, numerous trade agreements between the United States and other countries have implemented similar intellectual property provisions.¹³

Additionally, the United States entered into TRIPS as part of the Uruguay Rounds Agreement in 1994, which was finalized through the Marrakesh Agreement and established the World Trade Organization (WTO).¹⁴ TRIPS is the most significant step taken to date towards the creation of a uniform system of intellectual property rights and enforcement. For patents, TRIPS provides that "patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step, and are capable of industrial application."¹⁵ TRIPS also provides an international mechanism for resolving disputes that arise regarding intellectual property rights. The Dispute Settlement Body (DSB) of the WTO hears cases arising under TRIPS and these cases are subjected to the procedures

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established under the Dispute Settlement Understanding (DSU).¹⁶ Additionally, TRIPS provides the foundation for the TPP's Intellectual Property Chapter.¹⁷

In Part II, this Note will examine the domestic patent protections in the United States and the international patent provisions established under TRIPS and how the DSB has resolved conflicts that arise under TRIPS' patent provisions. In Part III, this Note will evaluate how the TPP's patent provisions fit within the framework established by NAFTA and TRIPS. To do so, this Note will explore any changes to existing United States patent provisions that might occur through the adoption of the TPP. Finally, in Part IV, this Note will examine the economic benefits that will accrue to the United States through the adoption of the patent provisions in the TPP. Additionally, this Note will explain why the accrual of economic benefits outweighs the public health concerns at the center of the controversy surrounding the TPP patent provisions.

II. Background

The intellectual property provisions of the TPP will have to fit into the existing framework provided for patents in TRIPS, to which the United States Code (U.S.C.) already conforms. The U.S.C. provides the existing domestic framework for patent protection and enforcement, including potential remedies. Meanwhile, TRIPS provides the international framework for patent protection and enforcement.

A. PATENTABLE MATERIAL UNDER THE UNITED STATES' DOMESTIC PATENT PROVISIONS

The United States has enacted statutes to determine a product's patentability. For example, 35 U.S.C. § 101 states that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof is patentable.¹⁸ Under this standard, the United States allows inventors patent new products, processes, and novel improvements of existing goods. The courts in the United States have

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interpreted the utility requirement to require merely that a purported invention have some beneficial use.¹⁹ Additionally, the United States only requires that an inventor set forth the best mode of application when applying for a patent.²⁰ This allows inventors to specify one use of a product when applying for a patent while also having the option to renew the product when a new use for the product is discovered. This option allows inventors to extend their exclusive use of a product through a practice known as "evergreening."²¹ Evergreening is a popular practice for pharmaceutical companies, which extend the effective life of their patent, often well beyond the statutory period of twenty years, to prevent cheaper generic drugs from entering the market.²²

Furthermore, under the utility prong of analysis, the Supreme Court has held that the invention must have an actual function at the time the inventor files for the patent to fulfill the utility requirement in 35 U.S.C. § 101.²³ The fact that an invention may have a possible use does not make the invention patentable. If there is no definitive use for the invention when the inventor files for the patent, the patent will be rejected.²⁴

Once an inventor has shown a product's utility, he must still demonstrate the invention's novelty. Under 35 U.S.C. § 102 (a), a person will be granted a patent unless "the claimed invention was patented, described in a printed publication (or in public use), on sale, or otherwise available to the public before the effective filing date of the claimed invention."²⁵ While the prior patent or description is applicable to actions taken in the United States and abroad, the public use, availability to the public, and sale of a prior invention exclusions require that the actions be taken only in the United States.²⁶ Under 35 U.S.C. § 102(a), there is a presumption that an invention is novel.²⁷ While there are exceptions to the rule established in 35 U.S.C. § 102,²⁸ these

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exceptions address when an invention should be granted a patent even when prohibited under 35 U.S.C. § 102(a).

Additionally, the United States requires that an invention be of...