The TPP changes the IP landscape in New Zealand

Article  \  8 Oct 2015

The New Zealand government has today released a factsheet outlining the changes that will need to be made to New Zealand's IP legislation following the TPP negotiations.

In brief:

1. New Zealand will be required to extend the copyright term to 70 years. The extension applies to works that are still within their current 50 year term of protection, but not those that have already fallen into the public domain.

2. New Zealand to provide stronger protection to technological protection measures (TPMs) – digital ‘locks’ that protect copyright works. The main new requirement is to provide civil and criminal remedies against people breaking TPMs.

3. TPP will not require any changes to New Zealand’s laws on parallel importing.

4. New Zealand will continue to provide five years of data protection for small molecule pharmaceuticals. For biologics, New Zealand will be required to provide the five years of data protection together with further effective market protection through other measures, taking into account local market circumstances. New Zealand will also need to provide 10 years of data protection for new agricultural chemicals.

5. New Zealand will be required to extend the term of a patent to compensate for any unreasonable delays in the patent examination process or if there were unreasonable delays in the safety and efficacy approval process run by Medsafe.

6. New Zealand will need to provide for ‘patent linkage’ but will not need to adopt the patent linkage models found in some other TPP countries.

7. New Zealand will need to adopt a 12 month “grace period” for patent applicants.

8. New Zealand will need to give New Zealand courts discretion to award additional damages for trade mark infringement, on top of the compensatory damages already provided for under New Zealand law.

9. New Zealand will need to join the following:

  • World Intellectual Property Organisation (WIPO) Copyright Treaty (WCT).
  • WIPO Performances and Phonograms Treaty (WPPT).
  • Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

10. TPP also includes a requirement for New Zealand to, within three years of entry into force of TPP, either accede to the most recent 1991 version of the International Convention for the Protection of New Varieties of Plants (UPOV 91), or alternatively, under a New Zealand specific approach, implement a plant variety rights system that gives effect to UPOV91.

This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact AJ Park representative.