TPP: civil disturbance is foreseen in Latin America

The 04 of November is set to be the date where several people around Latin America are taken the streets. Organisations in Argentina, Colombia, Chile, Mexico and Peru are planning to take this day to mobilize for ‘democracy and rejection of trade agreements' specifically the Trans-Pacific Partnership (TPP) and the Trade in Services Agreement (TISA which is a trade agreement presently being negotiated by 23 members of the World Trade Organisation (WTO) including Latin America countries such as Chile, Colombia, Costa Rica, Mexico, Panama and Peru). A year ago 12 states ratified the TPP. From Latin America they were: Chile, Mexico and Peru (early post here).

The call follows rejection of restrictive measures contained in these trade agreements. Accordingly the measures threaten the access to generic drugs and biosimilars, impose new trade conditions in the seed market, and restrict freedom of expression, among others. But this appears to be one side of the story -- the reason: the Office of the US Trade Representative asserts that the TPP will allow its members to “draw on the full benefits of scientific, technological, and medical innovation, and take part in development and enjoyment of new media and the arts.” However, one cannot forget the headline of this sentence “Supporting American jobs by promoting America’s innovation advantage.” This is followed by assertions such as “strong and effective protection and enforcement of IP rights is critical to U.S. economic”. These types of expressions seem to be one-sided i.e. the benefit is first for the US. However, in the US Trade Representative report we notice declarations such as that the TPP “Promote innovation and the development of new, lifesaving medicines”; “Promote affordable access to medicines, taking into account levels of development among the TPP countries and their existing laws and international commitments.”; and concluding that all IP “commitments are aligned with the Doha Declaration on TRIPS and Public Health, affirming the rights of countries to take measures to promote public health.” But we all know too well that such commitments when transposed to bilateral agreements are more than what they say…one is familiar with the term TRIP-Plus.

There are indeed two sides of the story and this is tracked by the fact of the claimed ‘secret negotiation’ that went on which was for many years a source of controversy (see news here and here).
Apart from this debate it is also noticeable some other patent related issues that can also be of controversy for some LA countries:

• Known product: TPP requires members to confirm that patents are available for either ‘new uses of a known product, new methods of using a known product, or new processes of using a known product’.

Chile IP Law N° 19.039: Art 33 (e) notices that new uses of articles, objects or known elements may constitute a subject matter of invention  provided that the said new use solves a problem without prior equivalent technical solution.
Mexico IP Law (last reformed published on DOF 01-06-2016): not stipulated by lawm thus do not recognise second use as a new invention.
Peru: Art 21 Decision 486 CAN notices that already patented products or processes, including the state of the technique, are not subject matter of new patents, for the simple fact that there is a new use which is different from that originally contemplated by the initial patent.
Bear in mind that second use patents are not allowed in any of the Andean Community States (Colombia, Ecuador, Peru and Bolivia). CAN legislation is supranational.

• Grace period for disclosure: TPP grants 12 months prior the Patent Application. This is in cases where the ‘disclosure’ is done by the applicant or a third party that obtained the information from the applicant which will not be taken into account when evaluating the novelty of the patent.

Chile: Art 42(a) IP law notes that disclosures made within 12 months prior to the submission of the application will not be considered for purposes of determining the novelty criteria if the public disclosure was made by the applicant of the patent, or if the disclosure was derived from abuse and unfair practices.
Mexico's Law states that: “The disclosure of an invention shall not affect that is still considered new when within twelve months prior to the filing date of the patent application or, where applicable,
the recognized priority date, the inventor or his assignee have disclosed the invention, by any media, for the implementation of the invention or because they have exhibited a
national or international exhibition. When the corresponding application shall include the
substantiating documentation under the conditions established by the regulations of this Act.”
Peru: Art 17 Decision 486 CAN notes that it will not be taken into consideration disclosures occurred within the year preceding the date of the submission of the application if it had been raised by the applicant in cases where such disclosure come from “the inventor or his successor in title; a competent national office which, in violation of the rule governing it, publishes the content of the patent application filed by the inventor or his successor in title; or, a third party who obtained the information directly or indirectly from the inventor or his successor in title.”

Adjusment or Extension?

•  'Patent Term Adjustment' (PTA) – some literature called this a patent ‘extension’, I do prefer to call it as it is: an adjustment given due to unreasonable administrative delays during the issuance of the Patent. TPP provides for the possibility of requesting a PTA.

Chile: Article 53bis1 IP Law already grants a PTA. A right holder may request within 6 months of the patent granted, a Supplementary Protection due to unjustified administrative delays.
Mexico: silent. The law does not cover this issue.
Peru: Decision 486 CAN does not cover this issue.

Many debates are seeing on regards to public health and we have covered this several times in this blog. This time it was time for a change - to cover a little bit of the procedural issues and some tips for enterprises when registering their patents abroad.