U.S. IPR Proposals for US-Thai FTA Worse than Feared
Brook K. Baker, Health GAP
Feb. 1, 2006
Recently released text of the “secret” U.S.T.R. IPR proposal in the US-Thai
FTA is much worse than suspected (it is far more restrictive than CAFTA or
Peru for example). Its TRIPS-plus/Doha-minus provisions include:
- Scope of patent - "patents shall be available for any new uses or
methods of using a known product." This provision allows ever-greening of
patents whereby minor changes in formulation or additional clinical uses
are used to extend the 20-year patent term already given to the basic
pharmaceutical product.
- No allowance of pre-grant opposition. The disallowance of pre-grant
opposition would prevent procedures like those just concluded in India
where an invalid patent claim on Gleevec was defeated before rather than
after the patent was granted. Pre-grant opposition procedures allow
intervenors to challenge weak patent applications by providing critical,
but sometimes non-disclosed, information to patent examination offices
before patents are improvidently granted.
- Compulsory licenses are limited to those that remedy anti-competitive
practices, that permit public non-commercial use, or that are in response
to a national emergency or other matter of extreme urgency. This attempt
to limit grounds for compulsory licenses is patently TRIPS- and Doha-plus.
Developing countries, including Thailand, fought long and hard to clarify
that countries are free to grant compulsory license for health related
purposes without restrictions. Despite signing on to the Doha Declaration
on the TRIPS Agreement and Public Health, the U.S. has consistently sought
to limit the application of compulsory licenses to competition cases,
emergencies, and government use. However, in more recent negotiations with
developing countries in Central America and the Andes, the U.S. has not
succeeded in restricting compulsory license rights in the text of FTAs, but
it is now trying to do so in Thailand. (Note: such a limitation might
well impact the scope of so-called public health side letters.)
- Public non-commercial use and emergency licenses are limited to use "by
the government or third parties authorized by the government" and thus
could limit private sector utilization of cheaper medicines. Compensation
for such CLs has to be "reasonable and entire compensation," a compensation
standard higher than that required by the TRIPS Agreement. Finally, such
CLs may not require the patent holder to provide undisclosed information or
technical know-how, limitations that might foreclose effective utilization
of an issued license.
- Delays in granting patents longer than 4 years shall result in an
extension of the patent term. Although the length of any such extension is
unspecified, the cost of these unwarranted extensions will be borne by
government and consumers who will wait longer for cheaper generic
equivalents.
- Unreasonable delays in granting marketing approval shall result in an
extension of the patent term. The length of delay and of extensions are
not specified, but once again patent holders will get longer patent terms
that will delay generic competition.
- Data exclusivity of 5 years is granted for both disclosed and
undisclosed data, whether based on safety and efficacy data or on evidence
of marketing approval, whenever Thailand relies on such data or evidence of
marketing approval. No matter how Thailand relies on registration
(clinical) data provided by originators and no matter how it might choose
to rely a prior registration of the identical product domestically or
elsewhere, the 5-year data exclusivity rule will given originators another
impenetrable form of market exclusivity. This exclusivity will apply even
if a patent has not been filed in Thailand and even if the patent term
expires.
- Data exclusivity is for new pharmaceutical products that does not
include a previously approved chemical entity. (Note: it's unclear
whether this term is substantially different from the TRIPS term, "new
chemical entity).
- Data exclusivity of 3 years is granted for marketing approvals of new
uses of existing pharmaceutical products if based on new clinical
information. Just as drug companies will be able to evergreen patents,
they will be able to evergreen generic drug registration for new uses.
- The US proposal provides for full patent/registration linkage, meaning
that Thailand’s drug regulatory agency will be required to confirm that
there are no existing patent claims (valid or invalid) implicated in the
new generic product – if there are such patents claims, the agency must
refuse to grant marketing approval. The agency must also inform the patent
holder of a potential infringing registration application so that it can
enforce its rights.