TPP provisions on Injunctions, are the TRIPS exceptions in or out?

Introduction

This note looks at the TPP, ACTA and TRIPS provisions on injunctions, and finds the TPP text unclear, as regards the possibility of exceptions to the obligation to make injunctions available in cases in of infringements. We have asked USTR and USPTO to clarify this issue.

Discussion

The TRIPS text on injunctions reads as follows:

Section 2: civil and administrative procedures and remedies
Article 44 – Injunctions.

1. The judicial authorities shall have the authority to order a party to desist from an infringement, inter alia to prevent the entry into the channels of commerce in their jurisdiction of imported goods that involve the infringement of an intellectual property right, immediately after customs clearance of such goods. Members are not obliged to accord such authority in respect of protected subject matter acquired or ordered by a person prior to knowing or having reasonable grounds to know that dealing in such subject matter would entail the infringement of an intellectual property right.

2. Notwithstanding the other provisions of this Part and provided that the provisions of Part II specifically addressing use by governments, or by third parties authorized by a government, without the authorization of the right holder are complied with, Members may limit the remedies available against such use to payment of remuneration in accordance with subparagraph (h) of Article 31. In other cases, the remedies under this Part shall apply or, where these remedies are inconsistent with a Member’s law, declaratory judgments and adequate compensation shall be available.

What did TRIPS say?

In the first sentence of TRIPS 44.1 it says that a WTO member must provide judges with “the authority to order a party to desist from an infringement.” In the second sentence of TRIPS 44.1, it says that this obligation does not apply to goods “acquired or ordered by a person prior to knowing or having reasonable grounds to know” about the infringement. And in Article 44.2, the TRIPS provides two cases where injunctions can be eliminated entirely by practice or statute, where right holders have adequate remuneration or compensation from infringement.

Article 44.2 of the TRIPS is quite important, because it permits a country to eliminate exclusive rights for any type of intellectual property, when adequate remuneration or compensation is involved — and this is what is needed to establish a liability regime, where the freedom to use an invention or copyrighted work is expanded, subject to the payments to the right holder.

The United States uses this flexibility to eliminate injunctions in several areas, including those covered by 28 USC 1498, for use of patents, copyrights, trademarks and other intellectual property rights “by and for” the government, as well as for patents on nuclear energy technologies, and patents on biologic drugs that are not disclosed on a timely basis to generic competitors, to mention just two cases. Canada uses this flexibility to eliminate injunctions for certain infringements of architectural works, an area where injunctions are highly problematic. (See: http://laws-lois.justice.gc.ca/eng/acts/C-42/page-42.html)

Now, consider the ACTA text on injunctions.

The entire civil enforcement Section of ACTA provides an exception for patents and regulatory test data, and this applies to ACTA provisions on injunctions, so the language is mostly about copyright, designs, semiconductor chips and trademarks. The ACTA text on injunctions is similiar to Articles 44 of the TRIPS Agreement, but the differences are important. ACTA did not have the exception for persons that obtained goods without knowing they were infringing. But ACTA does retain the word for word flexibilities of Article 44.2 of the TRIPS, as regards liability rules.

Anti-Counterfeiting Trade Agreement
Section 2: Civil Enforcement/2/

ARTICLE 8: INJUNCTIONS

1. Each Party shall provide that, in civil judicial proceedings concerning the enforcement of intellectual property rights, its judicial authorities have the authority to issue an order against a party to desist from an infringement, and inter alia, an order to that party or, where appropriate, to a third party over whom the relevant judicial authority exercises jurisdiction, to prevent goods that involve the infringement of an intellectual property right from entering into the channels of commerce.

2. Notwithstanding the other provisions of this Section, a Party may limit the remedies available against use by governments, or by third parties authorized by a government, without the authorization of the right holder, to the payment of remuneration, provided that the Party complies with the provisions of Part II of the TRIPS Agreement specifically addressing such use. In other cases, the remedies under this Section shall apply or, where these remedies are inconsistent with a Party’s law, declaratory judgments and adequate compensation shall be available.

/2/ A Party may exclude patents and protection of undisclosed information from the scope of this Section.

Now, take a look at the short TPP text on injunctions:

TPP Intellectual Property [Rights] Chapter
{Section H: Enforcement}
Article QQ.H.4: {Civil Procedures and Remedies / Civil and Administrative Procedures and Remedies}

[US/CA/BN/AU/JP/MX/NZ/PE/VN propose:

3./201/ Each Party shall provide that its judicial authorities have the authority to order injunctive relief that conforms to the provisions of Article 44 of the TRIPS Agreement, inter alia, to prevent goods that involve the infringement of an intellectual property right from entering into the channels of commerce [VN propose: in that Party’s Jurisdiction].]/202/

201 Negotiators’ Note: AU supports this paragraph ad referendum.
202 Negotiators’ Note: CL/MY/SG will revert back intersessionally.

The TPP text requires Parties to provide judges the “authority to order injunctive relief that conforms to the provisions of Article 44 of the TRIPS Agreement.” Does this mean that there are no exceptions to the obligations to provide for the possibility of injunctions to “prevent goods .. from entering the channels of commerce.” Or, does one read the TPP’s reference to “that conforms to . . . Article 44 of the TRIPS” as including all of the TRIPS exceptions on injunctions? We are asking USTR and other countries to clear this up.

It is not obvious why the TPP is using a different formulation on injunctions than is found in the TRIPS and ACTA, and it does raise the obvious question, are the TRIPS exceptions in or out?

If the TRIPS exceptions are not included, does the USTR want to pick up the phone and tell the President he has to amend the Affordable Care Act provisions on injunctions for biologic drugs? Does USTR want to pick up the phone and tell the Department of Defense that patent and copyright owners can now get injunctions against the federal government for infringements? And what about Article 37 of the TRIPS, that bars injunctions for infringing stock in hand, when acquired without prior knowledge of the infringement?

Will Canada have to eliminate its no injunction rule for infringements involving architectural works?

Below are a couple of laws that would need to be changed if the TPP does not permit exceptions as regards the possibility of obtaining an injunction.

Canada Copyright Law
No injunction in case of a building

40. (1) Where the construction of a building or other structure that infringes or that, if completed, would infringe the copyright in some other work has been commenced, the owner of the copyright is not entitled to obtain an injunction in respect of the construction of that building or structure or to order its demolition.

Marginal note:Certain remedies inapplicable

(2) Sections 38 and 42 do not apply in any case in respect of which subsection (1) applies.
R.S., 1985, c. C-42, s. 40; 1997, c. 24, s. 21.

The provisions added by the Affordable Care Act to limit injunctions for undisclosed patents on biologic drugs:

35 U.S.C. § 271 : US Code – Section 271: Infringement of patent
35 U.S.C. §271(e)(6)(B).
(B) In an action for infringement of a patent described in subparagraph (A), the sole and exclusive remedy that may be granted by a court, upon a finding that the making, using, offering to sell, selling, or importation into the United States of the biological product that is the subject of the action infringed the patent, shall be a reasonable royalty.

And, the US government use law, which has been around for a long time:

28 USC § 1498 – Patent and copyright cases

(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture. . . .

(b) Hereafter, whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages for such infringement, including the minimum statutory damages as set forth in section 504 (c) of title 17, United States Code: . . .

(d) Hereafter, whenever a plant variety protected by a certificate of plant variety protection under the laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government, and with the authorization and consent of the Government, the exclusive remedy of the owner of such certificate shall be by action against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation as damages for such infringement:

(e) Subsections (b) and (c) of this section apply to exclusive rights in mask works under chapter 9 of title 17, and to exclusive rights in designs under chapter 13 of title 17, to the same extent as such subsections apply to copyrights.

Under 17 U.S.C. 907, with respect to semiconductor chips, remedies are limited for innocent infringers and injunctions are not available. The innocent purchaser is liable only for a reasonable royalty for the stock on hand after he receives notice of the infringement.

Another limitation in US patent law concerns medical practitioners. Under 35 U.S.C. 287, injunctions are not available against medical practitioners performing a medical activity.

42 U.S.C. 2183 provides for nonmilitary utilization of nuclear or atomic energy. 42 U.S.C. 2184 provides for statuatory prohibitions injunctions relating to infringement of such patents.

With respect to trademarks, under 15 U.S.C. 1114, injunctive relief is not available against innocent infringement by printers and publishers:


Notes

For discussions of the proceedure in the U.S. Affordable Care Act as regards injunctions and damages for biologics patents, see:

  • Beverly Lubit, The Shortened Approval Pathway For Biosimilars: Will It Alter Universities’ And Startup Biotechs’ Reliance On Patents? BloomebergLaw.Com 2012
  • Stanton J. Lovenworth, The New Biosimilar Era: The Basics, The Landscape, And The Future, BloomebergLaw.Com 2012
  • Wendy H. Schacht and John R. Thomas, Follow-On Biologics: The Law and Intellectual Property Issues, Congressional Research Service. December 6, 2012.

From the Schacht Thomas article:

If a brand-name firm does not bring a patent infringement action in the courts within the statutory 30-day time period,93 then a court may only award a reasonable royalty as relief for infringement of a patent named in that suit.94 If the brand-name firm does not identify in a timely manner a patent in response to receipt of the follow-on application and manufacturing data, then it may not assert the patent at all.95 A later-acquired patent may also not be asserted if it is not identified within 30 days of its acquisition or exclusive licensing. Page 12

93 42 U.S.C. §262(l)(6)(A).
94 35 U.S.C. §271(e)(6)(B).
95 35 U.S.C. §271(e)(6)(C).

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