Agreement Establishing the World Trade Organization
(Continued)
Annex 1C: Agreement on Trade-Related Aspects of Intellectual Property Rights
Article 34: Process Patents: Burden of Proof
1. For the purposes of civil proceedings in respect of the infringement
of the rights of the owner referred to in paragraph 1(b) of Article
28, if the subject matter of a patent is a process for obtaining
a product, the judicial authorities shall have the authority to
order the defendant to prove that the process to obtain an identical
product is different from the patented process. Therefore, Members
shall provide, in at least one of the following circumstances,
that any identical product when produced without the consent of
the patent owner shall, in the absence of proof to the contrary,
be deemed to have been obtained by the patented process:
(a) if the product obtained by the patented process is new;
(b) if there is a substantial likelihood that the identical product
was made by the process and the owner of the patent has been unable
through reasonable efforts to determine the process actually used.
2. Any Member shall be free to provide that the burden of proof
indicated in paragraph 1 shall be on the alleged infringer only
if the condition referred to in subparagraph (a) is fulfilled
or only if the condition referred to in subparagraph (b) is fulfilled.
3. In the adduction of proof to the contrary, the legitimate interests
of defendants in protecting their manufacturing and business secrets
shall be taken into account.
Section 6: Layout-designs (Topographies) of Integrated Circuits
Article 35: Relation to the IPIC Treaty
Members agree to provide protection to the layout-designs (topographies)
of integrated circuits (referred to in this Agreement as "layout-designs")
in accordance with Articles 2 through 7 (other than paragraph
3 of Article 6), Article 12 and paragraph 3 of Article 16 of the
Treaty on Intellectual Property in Respect of Integrated Circuits
and, in addition, to comply with the following provisions.
Article 36: Scope of the Protection
Subject to the provisions of paragraph 1 of Article 37, Members
shall consider unlawful the following acts if performed without
the authorization of the right holder: 9 importing, selling,
or otherwise distributing for commercial purposes a protected
layout-design, an integrated circuit in which a protected layout-design
is incorporated, or an article incorporating such an integrated
circuit only in so far as it continues to contain an unlawfully
reproduced layout-design.
Article 37: Acts Not Requiring the Authorization of the Right
Holder
1. Notwithstanding Article 36, no Member shall consider unlawful
the performance of any of the acts referred to in that Article
in respect of an integrated circuit incorporating an unlawfully
reproduced layout-design or any article incorporating such an
integrated circuit where the person performing or ordering such
acts did not know and had no reasonable ground to know, when acquiring
the integrated circuit or article incorporating such an integrated
circuit, that it incorporated an unlawfully reproduced layout-design.
Members shall provide that, after the time that such person has
received sufficient notice that the layout-design was unlawfully
reproduced, that person may perform any of the acts with respect
to the stock on hand or ordered before such time, but shall be
liable to pay to the right holder a sum equivalent to a reasonable
royalty such as would be payable under a freely negotiated licence
in respect of such a layout-design.
2. The conditions set out in subparagraphs (a) through (k) of
Article 31 shall apply mutatis mutandis in the event of
any non-voluntary licensing of a layout-design or of its use by
or for the government without the authorization of the right holder.
Article 38: Term of Protection
1. In Members requiring registration as a condition of protection,
the term of protection of layout-designs shall not end before
the expiration of a period of 10 years counted from the date of
filing an application for registration or from the first commercial
exploitation wherever in the world it occurs.
2. In Members not requiring registration as a condition for protection,
layout-designs shall be protected for a term of no less than 10
years from the date of the first commercial exploitation wherever
in the world it occurs.
3. Notwithstanding paragraphs 1 and 2, a Member may provide that
protection shall lapse 15 years after the creation of the layout-design.
Section 7: Protection of Undisclosed Information
Article 39
1. In the course of ensuring effective protection against unfair
competition as provided in Article 10bis of the Paris Convention
(1967), Members shall protect undisclosed information in accordance
with paragraph 2 and data submitted to governments or governmental
agencies in accordance with paragraph 3.
2. Natural and legal persons shall have the possibility of preventing
information lawfully within their control from being disclosed
to, acquired by, or used by others without their consent in a
manner contrary to honest commercial practices 10 so long as
such information:
(a) is secret in the sense that it is not, as a body or in the
precise configuration and assembly of its components, generally
known among or readily accessible to persons within the circles
that normally deal with the kind of information in question;
(b) has commercial value because it is secret; and
(c) has been subject to reasonable steps under the circumstances,
by the person lawfully in control of the information, to keep
it secret.
3. Members, when requiring, as a condition of approving the marketing
of pharmaceutical or of agricultural chemical products which utilize
new chemical entities, the submission of undisclosed test or other
data, the origination of which involves a considerable effort,
shall protect such data against unfair commercial use. In addition,
Members shall protect such data against disclosure, except where
necessary to protect the public, or unless steps are taken to
ensure that the data are protected against unfair commercial use.
Section 8: Control of Anti-competitive Practices in Contractual
Licences
Article 40
1. Members agree that some licensing practices or conditions pertaining
to intellectual property rights which restrain competition may
have adverse effects on trade and may impede the transfer and
dissemination of technology.
2. Nothing in this Agreement shall prevent Members from specifying
in their legislation licensing practices or conditions that may
in particular cases constitute an abuse of intellectual property
rights having an adverse effect on competition in the relevant
market. As provided above, a Member may adopt, consistently with
the other provisions of this Agreement, appropriate measures to
prevent or control such practices, which may include for example
exclusive grantback conditions, conditions preventing challenges
to validity and coercive package licensing, in the light of the
relevant laws and regulations of that Member.
3. Each Member shall enter, upon request, into consultations with
any other Member which has cause to believe that an intellectual
property right owner that is a national or domiciliary of the
Member to which the request for consultations has been addressed
is undertaking practices in violation of the requesting Member's
laws and regulations on the subject matter of this Section, and
which wishes to secure compliance with such legislation, without
prejudice to any action under the law and to the full freedom
of an ultimate decision of either Member. The Member addressed
shall accord full and sympathetic consideration to, and shall
afford adequate opportunity for, consultations with the requesting
Member, and shall cooperate through supply of publicly available
non-confidential information of relevance to the matter in question
and of other information available to the Member, subject to domestic
law and to the conclusion of mutually satisfactory agreements
concerning the safeguarding of its confidentiality by the requesting
Member.
4. A Member whose nationals or domiciliaries are subject to proceedings
in another Member concerning alleged violation of that other Member's
laws and regulations on the subject matter of this Section shall,
upon request, be granted an opportunity for consultations by the
other Member under the same conditions as those foreseen in paragraph
3.
PART III ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
Section 1: General Obligations
Article 41
1. Members shall ensure that enforcement procedures as specified
in this Part are available under their law so as to permit effective
action against any act of infringement of intellectual property
rights covered by this Agreement, including expeditious remedies
to prevent infringements and remedies which constitute a deterrent
to further infringements. These procedures shall be applied in
such a manner as to avoid the creation of barriers to legitimate
trade and to provide for safeguards against their abuse.
2. Procedures concerning the enforcement of intellectual property
rights shall be fair and equitable. They shall not be unnecessarily
complicated or costly, or entail unreasonable time-limits or unwarranted
delays.
3. Decisions on the merits of a case shall preferably be in writing
and reasoned. They shall be made available at least to the parties
to the proceeding without undue delay. Decisions on the merits
of a case shall be based only on evidence in respect of which
parties were offered the opportunity to be heard.
4. Parties to a proceeding shall have an opportunity for review
by a judicial authority of final administrative decisions and,
subject to jurisdictional provisions in a Member's law concerning
the importance of a case, of at least the legal aspects of initial
judicial decisions on the merits of a case. However, there shall
be no obligation to provide an opportunity for review of acquittals
in criminal cases.
5. It is understood that this Part does not create any obligation
to put in place a judicial system for the enforcement of intellectual
property rights distinct from that for the enforcement of law
in general, nor does it affect the capacity of Members to enforce
their law in general. Nothing in this Part creates any obligation
with respect to the distribution of resources as between enforcement
of intellectual property rights and the enforcement of law in
general.
Section 2: Civil and Administrative Procedures and Remedies
Article 42: Fair and Equitable Procedures
Members shall make available to right holders 11 civil judicial
procedures concerning the enforcement of any intellectual property
right covered by this Agreement. Defendants shall have the right
to written notice which is timely and contains sufficient detail,
including the basis of the claims. Parties shall be allowed to
be represented by independent legal counsel, and procedures shall
not impose overly burdensome requirements concerning mandatory
personal appearances. All parties to such procedures shall be
duly entitled to substantiate their claims and to present all
relevant evidence. The procedure shall provide a means to identify
and protect confidential information, unless this would be contrary
to existing constitutional requirements.
Article 43: Evidence
1. The judicial authorities shall have the authority, where a
party has presented reasonably available evidence sufficient to
support its claims and has specified evidence relevant to substantiation
of its claims which lies in the control of the opposing party,
to order that this evidence be produced by the opposing party,
subject in appropriate cases to conditions which ensure the protection
of confidential information.
2. In cases in which a party to a proceeding voluntarily and without
good reason refuses access to, or otherwise does not provide necessary
information within a reasonable period, or significantly impedes
a procedure relating to an enforcement action, a Member may accord
judicial authorities the authority to make preliminary and final
determinations, affirmative or negative, on the basis of the information
presented to them, including the complaint or the allegation presented
by the party adversely affected by the denial of access to information,
subject to providing the parties an opportunity to be heard on
the allegations or evidence.
Article 44: Injunctions
1. The judicial authorities shall have the authority to order
a party to desist from an infringement, inter alia to prevent
the entry into the channels of commerce in their jurisdiction
of imported goods that involve the infringement of an intellectual
property right, immediately after customs clearance of such goods.
Members are not obliged to accord such authority in respect of
protected subject matter acquired or ordered by a person prior
to knowing or having reasonable grounds to know that dealing in
such subject matter would entail the infringement of an intellectual
property right.
2. Notwithstanding the other provisions of this Part and provided
that the provisions of Part II specifically addressing use by
governments, or by third parties authorized by a government, without
the authorization of the right holder are complied with, Members
may limit the remedies available against such use to payment of
remuneration in accordance with subparagraph (h) of Article 31.
In other cases, the remedies under this Part shall apply or, where
these remedies are inconsistent with a Member's law, declaratory
judgments and adequate compensation shall be available.
Article 45: Damages
1. The judicial authorities shall have the authority to order
the infringer to pay the right holder damages adequate to compensate
for the injury the right holder has suffered because of an infringement
of that person's intellectual property right by an infringer who
knowingly, or with reasonable grounds to know, engaged in infringing
activity.
2. The judicial authorities shall also have the authority to order
the infringer to pay the right holder expenses, which may include
appropriate attorney's fees. In appropriate cases, Members may
authorize the judicial authorities to order recovery of profits
and/or payment of pre-established damages even where the infringer
did not knowingly, or with reasonable grounds to know, engage
in infringing activity.
Article 46: Other Remedies
In order to create an effective deterrent to infringement, the
judicial authorities shall have the authority to order that goods
that they have found to be infringing be, without compensation
of any sort, disposed of outside the channels of commerce in such
a manner as to avoid any harm caused to the right holder, or,
unless this would be contrary to existing constitutional requirements,
destroyed. The judicial authorities shall also have the authority
to order that materials and implements the predominant use of
which has been in the creation of the infringing goods be, without
compensation of any sort, disposed of outside the channels of
commerce in such a manner as to minimize the risks of further
infringements. In considering such requests, the need for proportionality
between the seriousness of the infringement and the remedies ordered
as well as the interests of third parties shall be taken into
account. In regard to counterfeit trademark goods, the simple
removal of the trademark unlawfully affixed shall not be sufficient,
other than in exceptional cases, to permit release of the goods
into the channels of commerce.
Article 47: Right of Information
Members may provide that the judicial authorities shall have
the authority, unless this would be out of proportion to the seriousness
of the infringement, to order the infringer to inform the right
holder of the identity of third persons involved in the production
and distribution of the infringing goods or services and of their
channels of distribution.
Article 48: Indemnification of the Defendant
1. The judicial authorities shall have the authority to order
a party at whose request measures were taken and who has abused
enforcement procedures to provide to a party wrongfully enjoined
or restrained adequate compensation for the injury suffered because
of such abuse. The judicial authorities shall also have the authority
to order the applicant to pay the defendant expenses, which may
include appropriate attorney's fees.
2. In respect of the administration of any law pertaining to the
protection or enforcement of intellectual property rights, Members
shall only exempt both public authorities and officials from liability
to appropriate remedial measures where actions are taken or intended
in good faith in the course of the administration of that law.
Article 49: Administrative Procedures
To the extent that any civil remedy can be ordered as a result
of administrative procedures on the merits of a case, such procedures
shall conform to principles equivalent in substance to those set
forth in this Section.
Section 3: Provisional Measures
Article 50
1. The judicial authorities shall have the authority to order
prompt and effective provisional measures:
2. The judicial authorities shall have the authority to adopt
provisional measures inaudita altera parte where appropriate,
in particular where any delay is likely to cause irreparable harm
to the right holder, or where there is a demonstrable risk of
evidence being destroyed.
3. The judicial authorities shall have the authority to require
the applicant to provide any reasonably available evidence in
order to satisfy themselves with a sufficient degree of certainty
that the applicant is the right holder and that the applicant's
right is being infringed or that such infringement is imminent,
and to order the applicant to provide a security or equivalent
assurance sufficient to protect the defendant and to prevent abuse.
4. Where provisional measures have been adopted inaudita altera
parte, the parties affected shall be given notice, without
delay after the execution of the measures at the latest. A review,
including a right to be heard, shall take place upon request of
the defendant with a view to deciding, within a reasonable period
after the notification of the measures, whether these measures
shall be modified, revoked or confirmed.
5. The applicant may be required to supply other information necessary
for the identification of the goods concerned by the authority
that will execute the provisional measures.
6. Without prejudice to paragraph 4, provisional measures taken
on the basis of paragraphs 1 and 2 shall, upon request by the
defendant, be revoked or otherwise cease to have effect, if proceedings
leading to a decision on the merits of the case are not initiated
within a reasonable period, to be determined by the judicial authority
ordering the measures where a Member's law so permits or, in the
absence of such a determination, not to exceed 20 working days
or 31 calendar days, whichever is the longer.
7. Where the provisional measures are revoked or where they lapse
due to any act or omission by the applicant, or where it is subsequently
found that there has been no infringement or threat of infringement
of an intellectual property right, the judicial authorities shall
have the authority to order the applicant, upon request of the
defendant, to provide the defendant appropriate compensation for
any injury caused by these measures.
8. To the extent that any provisional measure can be ordered as
a result of administrative procedures, such procedures shall conform
to principles equivalent in substance to those set forth in this
Section.
Section 4: Special Requirements Related to Border Measures
12
Article 51: Suspension of Release by Customs Authorities
Members shall, in conformity with the provisions set out below,
adopt procedures 13 to enable a right holder, who has valid
grounds for suspecting that the importation of counterfeit trademark
or pirated copyright goods 14 may take place, to lodge an application
in writing with competent authorities, administrative or judicial,
for the suspension by the customs authorities of the release into
free circulation of such goods. Members may enable such an application
to be made in respect of goods which involve other infringements
of intellectual property rights, provided that the requirements
of this Section are met. Members may also provide for corresponding
procedures concerning the suspension by the customs authorities
of the release of infringing goods destined for exportation from
their territories.
Continue with Annex 1C
9 The term "right holder" in this Section shall
be understood as having the same meaning as the term "holder
of the right" in the IPIC Treaty.
10 For the purpose of this provision, "a manner contrary to honest commercial practices" shall mean at least practices
such as breach of contract, breach of confidence and inducement
to breach, and includes the acquisition of undisclosed information
by third parties who knew, or were grossly negligent in failing
to know, that such practices were involved in the acquisition.
11 For the purpose of this Part, the term "right
holder" includes federations and associations having legal
standing to assert such rights.
12 Where a Member has dismantled substantially all
controls over movement of goods across its border with another
Member with which it forms part of a customs union, it shall not
be required to apply the provisions of this Section at that border.
13 It is understood that there shall be no obligation
to apply such procedures to imports of goods put on the market
in another country by or with the consent of the right holder,
or to goods in transit.
14 For the purposes of this Agreement:
(a) "counterfeit trademark goods" shall mean any goods,
including packaging, bearing without authorization a trademark
which is identical to the trademark validly registered in respect
of such goods, or which cannot be distinguished in its essential
aspects from such a trademark, and which thereby infringes the
rights of the owner of the trademark in question under the law
of the country of importation;
(b) "pirated copyright goods" shall mean any goods
which are copies made without the consent of the right holder
or person duly authorized by the right holder in the country of
production and which are made directly or indirectly from an article
where the making of that copy would have constituted an infringement
of a copyright or a related right under the law of the country
of importation.
|