Minutes - TRIPS Council - View details of the intervention/statement

H.E. Ambassador Dr. Walter Werner
1.   This delegation is pleased to inform the Council that Japan recently amended its Unfair Competition Prevention Act, Patent Act, and Trademark Act. The amendments have been notified to this Council in accordance with Article 63.2. The reference numbers are IP/N/1/JPN/U/2, IP/N/1/JPN/P/14 and IP/N/1/JPN/T/9., We would like to take this opportunity to briefly explain some major points about the amendments. 2.   First, the Unfair Competition Prevention Act was revised to enhance regulation on acts of unfair competition that interfere with the technological restriction measures. For example, the revised Act newly covers regulations on the act of providing services of circumventing technological restriction measures to users. 3.   Secondly, the Patent Act was revised to be compatible with the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (hereinafter CPTPP), in particular with adding a new provision regarding the extension of duration of patent rights. Concretely, due to the revision, the duration of patent rights has turned to be extendable if the establishment of a patent right is registered after the date either five years since filing, or three years since a request for examination, whichever is later. The new system will be applicable to patent filings after 10 March 2020. 4.   Lastly, the Trademark Act was also revised to be compatible with the CPTPP, in particular with adding a new provision regarding the presumption of amount of damages. Specifically, the new provision enables a trademark holder to claim the damages with the presumption that it is the amount equivalent to the expenses which are normally required for the acquisition and maintenance of the trademark right. 5.   The Government of Japan will continuously fulfil its obligation to ensure the accessibility and the transparency of the Japanese intellectual property system.
1.   The Chair invited the Secretariat to report on notifications that the Council had received since its meeting in November 2018.
2.   A representative of the Secretariat said that the Council had received the following notifications under Article 63.2 of the TRIPS Agreement:
a. Japan had notified consolidated versions of the Unfair Competition Prevention Act, the Patent Act and the Trademark Act. The Trademark Act and the Patent Act had been revised to be compatible with the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). The Unfair Competition Prevention Act had been revised to enhance regulation and enforcement of acts of unfair competition relating to undisclosed data in the context of information technologies.
b. Chinese Taipei had notified a revision to the Enforcement Rules of the Trademarks Act, which reflected changes permitting direct reference to WIPO's International Classification of Goods and Services. It had also notified revised Regulations governing the Determination of Patent Term Extension, including changes to facilitate requests for patent term extensions for pharmaceuticals, agrochemicals and their manufacturing processes.
c. Norway has notified consolidated versions of the Norwegian Trademarks Act and the Norwegian Designs Act, which mainly reflected consequential changes from the entry into force of the Penal Code. Norway had also notified consolidated versions of the Norwegian Patent Regulations and the Regulation relating to payments to the Norwegian Industrial Property Office and the Board of Appeal for Industrial Property Rights. These versions reflected amendments accommodating changes in the Patents Act, which introduced the possibility of establishing security interests in Patents and Plant Variety Rights, and changes regarding extensions of supplementary protection certificates for medicinal products for paediatric use.
d. The United States had notified the Music Modernization Act that updated copyright-related issues for music and audio recordings in light of new technologies, like digital streaming. Regarding patent law, the United States had also notified the Study of Underrepresented Classes Chasing Engineering and Science Success Act of 2018 (SUCCESS Act), which directed certain agencies to study the participation of women, minorities, and veterans in entrepreneurship activities and the patent system; and, to develop recommendations for improvement.
e. Samoa had submitted its first notification of its Intellectual Property Act and IP Regulations that were passed in the context of its accession to the WTO. It had also submitted its responses to the Checklist of Issues on Enforcement.
3.   Since the circulation of the agenda, the United States had also notified the Marrakesh Treaty Implementation Act, which revised the Copyright Act to implement the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.
4.   Under Article 69, Samoa and Myanmar had provided information on contact points for the exchange of information and cooperation on trade in infringing goods. The Members' transparency toolkit page would be updated accordingly.
5.   The Chair invited delegations that had notified new or revised legislative measures, or submitted updates to their contact points, to introduce their notifications. He also invited other delegations that might wish to comment on them.
6.   The representatives of Japan, Chinese Taipei, Norway, and the United States of America took the floor.
7.   The Chair invited the Secretariat to provide an update on the development of e-TRIPS, an online platform for filing and consulting notifications and other Council documentation.
8.   A representative of the Secretariat briefed Members on the development of e-TRIPS.
9.   The Chair recalled that notifications to the Council were not keeping up with the actual development of laws and regulations relating to TRIPS. He recalled that Article 63.2 was not a oneoff requirement, but obliged Members to notify any new or amended laws. Therefore, he urged Members to complete any outstanding initial notifications and to keep up to date with notifications on subsequent amendments. The same applied to the Checklist of Issues on Enforcement which had been established by the Council as an element of Members' notification obligations.
10.   The Council took note of the notifications and the statements made.
IP/C/M/91, IP/C/M/91/Add.1, IP/C/M/91/Corr.1