2014 Oct 3 version: Korea proposal for RECP IP Chapter (Regional Comprehensive Economic Partnership)

(More KEI RCEP leaks here: /rcep)

Attached (here) is the October 3, 2014 version of the Draft Text, of the Intellectual Property Chapter, for the Regional Comprehensive Economic Partnership (RCEP), Free Trade Agreement, tabled by South Korea in the negotiations. (More about the RCEP here)

The next round of negotiation will be held in Kyoto, Japan from 8-12 June.

The text is terrible, and includes a number of provisions that are controversial in the TPP negotiations.

For example, for damages in cases involving infringement, Korea has proposed the aggressive standard promoted by the United States in other trade agreements.

(b) in determining damages for infringement of intellectual property rights, its judicial authorities shall consider, inter alia, the value of the infringed good or service, measured by the market price, the suggested retail price, or other legitimate measure of value submitted by the right holder.

Life plus 70 years, or 70 years, for terms not based upon the life of an individual, for the copyright term:

2. Each Party shall provide that, where the term of protection of a work(including a photographic work), performance, phonogram or broadcasting is to be calculated:

(a) 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; and . . .

Reference to a 3-step test for patent exceptions, but no reference to the WTO exceptions for compulsory licenses. (See commentary on this issue here: KEI TPP Briefing note 2015:1 Compulsory licenses on patents and the 3-step test).

3. Each Party may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

Likewise in the section on copyright and related rights, the agreement would impose a 3-step test on limitations and exceptions (something increasingly common in trade agreements), without acknowledging or protecting the different standards for “particular” or “specific” exceptions found in the Berne or Rome conventions. (See: /BerneConventionExceptions for more on the Berne exceptions).

Section B : Copyright and Related Rights
Article [X.B.7]: Limitations and Exceptions
Each Party shall confine limitations or exceptions to exclusive rights to certain special cases that do not conflict with a normal exploitation of the work, performance, phonogram or broadcasting, and do not unreasonably prejudice the legitimate interests of the right holder.

The provision in the agreement on “undisclosed information” merely makes a reference to Article 39 of the TRIPS, but it gives right holders a new and separate fora for not only enforcing those rights, but interpreting them.

Article [X.F.2]: Undisclosed Information
The Parties shall ensure in its laws and regulations adequate and effective protection of undisclosed information in accordance with Article 39 of the TRIPS Agreement.

Korea proposes mandatory patent extensions for delays in granting patents or approving products.

Section D : Patents and Utility Model

Article [X.D.1]: Patents Protection
(a) Each Party, at the request of the patent owner, shall adjust the term of a patent to compensate for unreasonable delays that occur in granting the patent. For purposes of this subparagraph, an unreasonable delay shall at least include a delay in the issuance of the patent of more than four years from the date of filing of the application in the territory of the Party, or three years after a request for examination of the application, whichever is later. Periods attributable to actions of the patent applicant need not be included in the determination of such delays.

(b) With respect to patents covering a new pharmaceutical product that is approved for marketing in the territory of the Party and methods of making or using a new pharmaceutical product that is approved for marketing in the territory of the Party, each Party, at the request of the patent owner shall make available an adjustment of the patent term or the term of the patent rights of a patent covering a new pharmaceutical product, its approved method of use, or a method of making the product to compensate the patent owner for unreasonable curtailment of the effective patent term as a result of the marketing approval process related to the first commercial use of that pharmaceutical product in the territory of that Party. Any adjustment under this subparagraph shall confer all of the exclusive rights, subject to the same limitations and exceptions, of the patent claims of the product, its method of use, or its method of manufacture in the originally issued patent as applicable to the product and the approved method of use of the product.

Commentary and Context: