2014 AIPLA Mid-Winter Institute
IP Practice in Japan Committee Pre-Meeting
Naoki Yoshida
Sumiko Kobayashi
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The U.S. Trade Representative (USTR) and its
foreign counterparts reportedly entered into an
agreement to keep TPP negotiation classified
USTR established the Industry Trade Advisory
Committee on IP Rights (ITAC-15), a select group
of representative from industry, business, and
other private sector interests to assist USTR in
developing the US’s IP negotiating position
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Members from GE Aviation, Entertainment Software
Association, Gilead Sciences, Inc., Cisco Systems, Inc.,
Yahoo! Inc., Infectious Disease Research Institute,
Copyright Clearance Center, Mylan Inc., etc.
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USTR maintains complete secrecy in
substantive communications with ITAC-15,
including recommendations made by ITAC-15
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IP News Agency’s suit against USTR to release
TPP related documents
Legislation to grant the President a “fast-track”
authority to enact TPP
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Intellectual Property Watch, a nonprofit news
agency, submitted a Freedom of Information Act
(FOIA) request to USTR, and sought certain
records relating to TPP
USTR refused, stating that requested documents
are exempt from disclosure under FOIA because
they are classified per an Executive Order that
relates to national security information and are
withheld based on deliberative process privilege
under FOIA exemption
On December 18, 2013, IP Watch sued USTR in a
district court in NY to compel the release of more
documents relating to TPP
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Sen. Max Baucus, Sen. Orrin Hatch (R.), and Rep. Dave
Camp (R.) introduced “Bipartisan Congressional Trade
Priorities Act of 2014,” a bill to renew President’s “fasttrack” negotiation authority, on January 9, 2014
“Bipartisan?” Rep. Sander Levin (D.) is opposing the
bill and may propose a different bill
Currently U.S. is negotiating two trade deals TPP and
the Trans-Atlantic Free Trade Agreement, a pact with
the European Union
This is not something new in trade negotiations – the
General Agreement on Tariffs and Trade (GATT), the
South Korea – United States Free Trade Agreement, etc.
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This “fast-track” bill empower the President to
sign a trade pact before Congress votes on it
When the President submits a “fast-track” bill to
Congress, the bill must be introduced in the House
and the Senate immediately
The bill cannot be amended
House and Senate must vote within a limited time
period – Limited debate time and no filibustering
allowed
Congress has less than 90 days to vote
19 U.S. Code § 2191
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Cabinet is responsible for TPP negotiations and
adopts the treaty
Diet needs to approve the treaty
Japanese Constitution Article 73
 “The cabinet, in addition to other general
administrative functions, shall perform the following
functions: . . . 3. Conclude treaties. However, it shall
obtain prior or, depending on circumstances,
subsequent approval of the diet
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WikiLeaks!!!
WikiLeaks published a draft of negotiated text
of the TPP’s IP chapter on November 13, 2013
The draft is dated August 30, 2013
Credible? – So far many have not questioned
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Let’s look at how countries are voting with
respect to some of the proposed provisions as
of August 30, 2013
And make a wild guess if it will pass
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Registrability of Sounds and Scents as
Trademarks （Art QQC１）
FOR : 9 countries incl. U.S. (4 countries incl.
Japan are against the registrability of scents)
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AGAINST : 3 countries incl. Mexico
How do you register a scent?
Good chance of passing with respect to sounds
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Plants and Animals as Patentable Subject
Matter （Art QQE1 3(a)）
FOR: U.S.
 AGAINST: 10 countries
 Japan did not take a position on this
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Not likely to pass
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Diagnostic, Therapeutic, and Surgical Methods
for the Treatment of Humans or Animals as
Patentable Subject Matter （Art QQE1 3(b)）
FOR: Only U.S.
 AGAINST: 11 countries incl. Japan
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Not likely to pass
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Submission of Information or Evidence
Concerning the Safety or Efficacy of a New
Pharmaceutical Product
More protection to a new pharmaceutical
product （Art QQE1 16）
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FOR: U.S.
AGANST: 8 countries incl. Australia
Three countries incl. Japan did not take a position
May be an uphill battle for U.S. proposal
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Term of Protection for Copyright (Arts QQG67)
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US : Life of author +70 years, not less than 95 years
from the first authorized publication of the work, or
not less than 120 years from the creation of the work
Others incl. Australia are FOR but in favor of shorter
terms
AGAINST: Six countries incl. Japan
No idea what will pass
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http://www.wikileaks.org/tpp/
Issues
 US v JP
Open Completely agricultural market
 JP v US
Disclose timing of removal of 2.5 % tariff to
Japanese cars
Schedule
Multilateral Executive Conf. in February 2014?
Naoki Yoshida
Sumiko Kobayashi
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
Abe, Ikubo & Katayama
Shiroyama Trust Tower, 33rd Floor
Fukuoka Building 9th Floor
3-1, Toranomon 4-chome
2-Yaesu, Chuo-ku, Tokyo 104-0028
Minato-ku, Tokyo 105-6033 Japan
Telephone: +81-3-3273-2600
Tel: (81) 3-3431-6517
Email:sumiko.kobayashi@aiklaw.co.jp
Email: naoki.yoshida@finnegan.com