Copyright 1995 NLCIFT
Title:AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS
AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY
RIGHTS, INCLUDING TRADE IN COUNTERFEIT GOODS
TABLE OF CONTENTS
Part I: General Provisions and Basic Principles
Part II: Standards Concerning the Availability, Scope and Use of
Intellectual Property Rights
1. Copyright and Related Rights
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Layout-Designs (Topographies) of Integrated
Circuits
7. Protection of Undisclosed Information
8. Control of Anti-Competitive Practices in
Contractual Licences
Part III: Enforcement of Intellectual Property Rights
1. General Obligations
2. Civil and Administrative Procedures and Remedies
3. Provisional Measures
4. Special Requirements Related to Border Measures
5. Criminal Procedures
Part IV: Acquisition and Maintenance of Intellectual Property
Rights and Related Inter-Partes Procedures
Part V: Dispute Prevention and Settlement
Part VI: Transitional Arrangements
Part VII: Institutional Arrangements; Final Provisions
AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY
RIGHTS, INCLUDING TRADE IN COUNTERFEIT GOODS
Members,
Desiring to reduce distortions and impediments to
international trade, and taking into account the need to promote
effective and adequate protection of intellectual property
rights, and to ensure that measures and procedures to enforce
intellectual property rights do not themselves become barriers to
legitimate trade;
Recognizing, to this end, the need for new rules and
disciplines concerning:
(a) the applicability of the basic principles of the GATT
1994 and of relevant international intellectual
property agreements or conventions;
(b) the provision of adequate standards and principles
concerning the availability, scope and use of trade-
related intellectual property rights;
(c) the provision of effective and appropriate means for
the enforcement of trade-related intellectual property
rights, taking into account differences in national
legal systems;
(d) the provision of effective and expeditious procedures
for the multilateral prevention and settlement of
disputes between governments; and
(e) transitional arrangements aiming at the fullest
participation in the results of the negotiations;
Recognizing the need for a multilateral framework of
principles, rules and disciplines dealing with international
trade in counterfeit goods;
Recognizing that intellectual property rights are private
rights;
Recognizing the underlying public policy objectives of
national systems for the protection of intellectual property,
including developmental and technological objectives;
Recognizing also the special needs of the least-developed
country Members in respect of maximum flexibility in the domestic
implementation of laws and regulations in order to enable them to
create a sound and viable technological base;
Emphasizing the importance of reducing tensions by reaching
strengthened commitments to resolve disputes on trade-related
intellectual property issues through multilateral procedures;
Desiring to establish a mutually supportive relationship
between the MTO and the World Intellectual Property Organization
(WIPO) as well as other relevant international organisations;
Hereby agree as follows:
PART I: GENERAL PROVISIONS AND BASIC PRINCIPLES
Article 1
Nature and Scope of Obligations
1. Members shall give effect to the provisions of this
Agreement. Members may, but shall not be obliged to, implement
in their domestic law more extensive protection than is required
by this Agreement, provided that such protection does not
contravene the provisions of this Agreement. Members shall be
free to determine the appropriate method of implementing the
provisions of this Agreement within their own legal system and
practice.
2. For the purposes of this Agreement, the term "intellectual
property" refers to all categories of intellectual property that
are the subject of Sections 1 to 7 of Part II.
3. Members shall accord the treatment provided for in this
Agreement to the nationals of other Members. In respect of the
relevant intellectual property right, the nationals of other
Members shall be understood as those natural or legal persons
that would meet the criteria for eligibility for protection
provided for in the Paris Convention (1967), the Berne Convention
(1971), the Rome Convention and the Treaty on Intellectual
Property in Respect of Integrated Circuits, were all Members of
the MTO members of those conventions. Any Member availing
itself of the possibilities provided in paragraph 3 of Article 5
or paragraph 2 of Article 6 of the Rome Convention shall make a
notification as foreseen in those provisions to the Council for
Trade-Related Aspects of Intellectual Property Rights.
Article 2
Intellectual Property Conventions
1. In respect of Parts II, III and IV of this Agreement,
Members shall comply with Articles 1-12 and 19 of the Paris
Convention (1967).
2. Nothing in Parts I to IV of this Agreement shall derogate
from existing obligations that Members may have to each other
under the Paris Convention, the Berne Convention, the Rome
Convention and the Treaty on Intellectual Property in Respect of
Integrated Circuits.
Article 3
National Treatment
1. Each Member shall accord to the nationals of other Members
treatment no less favourable than that it accords to its own
nationals with regard to the protection of intellectual
property, subject to the exceptions already provided in,
respectively, the Paris Convention (1967), the Berne Convention
(1971), the Rome Convention and the Treaty on Intellectual
Property in Respect of Integrated Circuits. In respect of
performers, producers of phonograms and broadcasting
organizations, this obligation only applies in respect of the
rights provided under this Agreement. Any Member availing itself
of the possibilities provided in Article 6 of the Berne
Convention and paragraph 1(b) of Article 16 of the Rome
Convention shall make a notification as foreseen in those
provisions to the Council for Trade-Related Aspects of
Intellectual Property Rights.
2. Members may avail themselves of the exceptions permitted
under paragraph 1 above in relation to judicial and
administrative procedures, including the designation of an
address for service or the appointment of an agent within the
jurisdiction of a Member, only where such exceptions are
necessary to secure compliance with laws and regulations which
are not inconsistent with the provisions of this Agreement and
where such practices are not applied in a manner which would
constitute a disguised restriction on trade.
Article 4
Most-Favoured-Nation Treatment
With regard to the protection of intellectual property, any
advantage, favour, privilege or immunity granted by a Member to
the nationals of any other country shall be accorded immediately
and unconditionally to the nationals of all other Members.
Exempted from this obligation are any advantage, favour,
privilege or immunity accorded by a Member:
(a) deriving from international agreements on judicial
assistance and law enforcement of a general nature and
not particularly confined to the protection of
intellectual property;
(b) granted in accordance with the provisions of the Berne
Convention (1971) or the Rome Convention authorizing
that the treatment accorded be a function not of
national treatment but of the treatment accorded in
another country;
(c) in respect of the rights of performers, producers of
phonograms and broadcasting organizations not provided
under this Agreement;
(d) deriving from international agreements related to the
protection of intellectual property which entered into
force prior to the entry into force of the Agreement
Establishing the MTO, provided that such agreements are
notified to the Council for Trade-Related Aspects of
Intellectual Property Rights and do not constitute an
arbitrary or unjustifiable discrimination against
nationals of other Members.
Article 5
Multilateral Agreements on Acquisition or
Maintenance of Protection
The obligations under Articles 3 and 4 above do not apply to
procedures provided in multilateral agreements concluded under
the auspices of the World Intellectual Property Organization
relating to the acquisition or maintenance of intellectual
property rights.
Article 6
Exhaustion
For the purposes of dispute settlement under this Agreement,
subject to the provisions of Articles 3 and 4 above nothing in
this Agreement shall be used to address the issue of the
exhaustion of intellectual property rights.
Article 7
Objectives
The protection and enforcement of intellectual property
rights should contribute to the promotion of technological
innovation and to the transfer and dissemination of technology,
to the mutual advantage of producers and users of technological
knowledge and in a manner conducive to social and economic
welfare, and to a balance of rights and obligations.
Article 8
Principles
1. Members may, in formulating or amending their national laws
and regulations, adopt measures necessary to protect public
health and nutrition, and to promote the public interest in
sectors of vital importance to their socio-economic and
technological development, provided that such measures are
consistent with the provisions of this Agreement.
2. Appropriate measures, provided that they are consistent with
the provisions of this Agreement, may be needed to prevent the
abuse of intellectual property rights by right holders or the
resort to practices which unreasonably restrain trade or
adversely affect the international transfer of technology.
PART II: STANDARDS CONCERNING THE AVAILABILITY, SCOPE
AND USE OF INTELLECTUAL PROPERTY RIGHTS
SECTION 1: COPYRIGHT AND RELATED RIGHTS
Article 9
Relation to Berne Convention
1. Members shall comply with Articles 1-21 and the Appendix of
the Berne Convention (1971). However, Members shall not have
rights or obligations under this Agreement in respect of the
rights conferred under Article 6bis of that Convention or of the
rights derived therefrom.
2. Copyright protection shall extend to expressions and not to
ideas, procedures, methods of operation or mathematical concepts
as such.
Article 10
Computer Programs and Compilations of Data
1. Computer programs, whether in source or object code, shall
be protected as literary works under the Berne Convention (1971).
2. Compilations of data or other material, whether in machine
readable or other form, which by reason of the selection or
arrangement of their contents constitute intellectual creations
shall be protected as such. Such protection, which shall not
extend to the data or material itself, shall be without prejudice
to any copyright subsisting in the data or material itself.
Article 11
Rental Rights
In respect of at least computer programs and cinematographic
works, a Member shall provide authors and their successors in
title the right to authorize or to prohibit the commercial rental
to the public of originals or copies of their copyright works. A
Member shall be excepted from this obligation in respect of
cinematographic works unless such rental has led to widespread
copying of such works which is materially impairing the exclusive
right of reproduction conferred in that Member on authors and
their successors in title. In respect of computer programs, this
obligation does not apply to rentals where the program itself is
not the essential object of the rental.
Article 12
Term of Protection
Whenever the term of protection of a work, other than a
photographic work or a work of applied art, is calculated on a
basis other than the life of a natural person, such term shall be
no less than fifty years from the end of the calendar year of
authorized publication, or, failing such authorised publication
within fifty years from the making of the work, fifty years from
the end of the calendar year of making.
Article 13
Limitations and Exceptions
Members shall confine limitations or exceptions to exclusive
rights to certain special cases which do not conflict with a
normal exploitation of the work and do not unreasonably prejudice
the legitimate interests of the right holder.
Article 14
Protection of Performers, Producers of Phonograms
(Sound Recordings) and Broadcasting Organizations
1. In respect of a fixation of their performance on a
phonogram, performers shall have the possibility of preventing
the following acts when undertaken without their authorization:
the fixation of their unfixed performance and the reproduction of
such fixation. Performers shall also have the possibility of
preventing the following acts when undertaken without their
authorization: the broadcasting by wireless means and the
communication to the public of their live performance.
2. Producers of phonograms shall enjoy the right to authorize
or prohibit the direct or indirect reproduction of their
phonograms.
3. Broadcasting organizations shall have the right to prohibit
the following acts when undertaken without their authorization:
the fixation, the reproduction of fixations, and the
rebroadcasting by wireless means of broadcasts, as well as the
communication to the public of television broadcasts of the same.
Where Members do not grant such rights to broadcasting
organizations, they shall provide owners of copyright in the
subject matter of broadcasts with the possibility of preventing
the above acts, subject to the provisions of the Berne Convention
(1971).
4. The provisions of Article 11 in respect of computer programs
shall apply mutatis mutandis to producers of phonograms and any
other right holders in phonograms as determined in domestic law.
If, on the date of the Ministerial Meeting concluding the Uruguay
Round of Multilateral Trade Negotiations, a Member has in force a
system of equitable remuneration of right holders in respect of
the rental of phonograms, it may maintain such system provided
that the commercial rental of phonograms is not giving rise to
the material impairment of the exclusive rights of reproduction
of right holders.
5. The term of the protection available under this Agreement to
performers and producers of phonograms shall last at least until
the end of a period of fifty years computed from the end of the
calendar year in which the fixation was made or the performance
took place. The term of protection granted pursuant to
paragraph 3 above shall last for at least twenty years from the
end of the calendar year in which the broadcast took place.
6. Any Member may, in relation to the rights conferred under
paragraphs 1-3 above, provide for conditions, limitations,
exceptions and reservations to the extent permitted by the Rome
Convention. However, the provisions of Article 18 of the Berne
Convention (1971) shall also apply, mutatis mutandis, to the
rights of performers and producers of phonograms in phonograms.
SECTION 2: TRADEMARKS
Article 15
Protectable Subject Matter
1. Any sign, or any combination of signs, capable of
distinguishing the goods or services of one undertaking from
those of other undertakings, shall be capable of constituting a
trademark. Such signs, in particular words including personal
names, letters, numerals, figurative elements and combinations of
colours as well as any combination of such signs, shall be
eligible for registration as trademarks. Where signs are not
inherently capable of distinguishing the relevant goods or
services, Members may make registrability depend on
distinctiveness acquired through use. Members may require, as a
condition of registration, that signs be visually perceptible.
2. Paragraph 1 above shall not be understood to prevent a
Member from denying registration of a trademark on other grounds,
provided that they do not derogate from the provisions of the
Paris Convention (1967).
3. Members may make registrability depend on use. However,
actual use of a trademark shall not be a condition for filing an
application for registration. An application shall not be
refused solely on the ground that intended use has not taken
place before the expiry of a period of three years from the date
of application.
4. The nature of the goods or services to which a trademark is
to be applied shall in no case form an obstacle to registration
of the trademark.
5. Members shall publish each trademark either before it is
registered or promptly after it is registered and shall afford a
reasonable opportunity for petitions to cancel the registration.
In addition, Members may afford an opportunity for the
registration of a trademark to be opposed.
Article 16
Rights Conferred
1. The owner of a registered trademark shall have the exclusive
right to prevent all third parties not having his consent from
using in the course of trade identical or similar signs for goods
or services which are identical or similar to those in respect of
which the trademark is registered where such use would result in
a likelihood of confusion. In case of the use of an identical
sign for identical goods or services, a likelihood of confusion
shall be presumed. The rights described above shall not
prejudice any existing prior rights, nor shall they affect the
possibility of Members making rights available on the basis of
use.
2. Article 6bis of the Paris Convention (1967) shall apply,
mutatis mutandis, to services. In determining whether a
trademark is well-known, account shall be taken of the knowledge
of the trademark in the relevant sector of the public, including
knowledge in that Member obtained as a result of the promotion of
the trademark.
3. Article 6bis of the Paris Convention (1967) shall apply,
mutatis mutandis, to goods or services which are not similar to
those in respect of which a trademark is registered, provided
that use of that trademark in relation to those goods or services
would indicate a connection between those goods or services and
the owner of the registered trademark and provided that the
interests of the owner of the registered trademark are likely to
be damaged by such use.
Article 17
Exceptions
Members may provide limited exceptions to the rights
conferred by a trademark, such as fair use of descriptive terms,
provided that such exceptions take account of the legitimate
interests of the owner of the trademark and of third parties.
Article 18
Term of Protection
Initial registration, and each renewal of registration, of a
trademark shall be for a term of no less than seven years. The
registration of a trademark shall be renewable indefinitely.
Article 19
Requirement of Use
1. If use is required to maintain a registration, the
registration may be cancelled only after an uninterrupted period
of at least three years of non-use, unless valid reasons based on
the existence of obstacles to such use are shown by the trademark
owner. Circumstances arising independently of the will of the
owner of the trademark which constitute an obstacle to the use of
the trademark, such as import restrictions on or other government
requirements for goods or services protected by the trademark,
shall be recognized as valid reasons for non-use.
2. When subject to the control of its owner, use of a trademark
by another person shall be recognized as use of the trademark for
the purpose of maintaining the registration.
Article 20
Other Requirements
The use of a trademark in the course of trade shall not be
unjustifiably encumbered by special requirements, such as use
with another trademark, use in a special form or use in a manner
detrimental to its capability to distinguish the goods or
services of one undertaking from those of other undertakings.
This will not preclude a requirement prescribing the use of the
trademark identifying the undertaking producing the goods or
services along with, but without linking it to, the trademark
distinguishing the specific goods or services in question of that
undertaking.
Article 21
Licensing and Assignment
Members may determine conditions on the licensing and
assignment of trademarks, it being understood that the compulsory
licensing of trademarks shall not be permitted and that the owner
of a registered trademark shall have the right to assign his
trademark with or without the transfer of the business to which
the trademark belongs.
SECTION 3: GEOGRAPHICAL INDICATIONS
Article 22
Protection of Geographical Indications
1. Geographical indications are, for the purposes of this
Agreement, indications which identify a good as originating in
the territory of a Member, or a region or locality in that
territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its
geographical origin.
2. In respect of geographical indications, Members shall
provide the legal means for interested parties to prevent:
(a) the use of any means in the designation or presentation
of a good that indicates or suggests that the good in
question originates in a geographical area other than
the true place of origin in a manner which misleads the
public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition
within the meaning of Article 10bis of the Paris
Convention (1967).
3. A Member shall, ex officio if its legislation so permits or
at the request of an interested party, refuse or invalidate the
registration of a trademark which contains or consists of a
geographical indication with respect to goods not originating in
the territory indicated, if use of the indication in the
trademark for such goods in that Member is of such a nature as to
mislead the public as to the true place of origin.
4. The provisions of the preceding paragraphs of this Article
shall apply to a geographical indication which, although
literally true as to the territory, region or locality in which
the goods originate, falsely represents to the public that the
goods originate in another territory.
Article 23
Additional Protection for Geographical Indications
for Wines and Spirits
1. Each Member shall provide the legal means for interested
parties to prevent use of a geographical indication identifying
wines for wines not originating in the place indicated by the
geographical indication in question or identifying spirits for
spirits not originating in the place indicated by the
geographical indication in question, even where the true origin
of the goods is indicated or the geographical indication is used
in translation or accompanied by expressions such as "kind",
"type", "style", "imitation" or the like.
2. The registration of a trademark for wines which contains or
consists of a geographical indication identifying wines or for
spirits which contains or consists of a geographical indication
identifying spirits shall be refused or invalidated, ex officio
if domestic legislation so permits or at the request of an
interested party, with respect to such wines or spirits not
having this origin.
3. In the case of homonymous geographical indications for
wines, protection shall be accorded to each indication, subject
to the provisions of paragraph 4 of Article 22 above. Each
Member shall determine the practical conditions under which the
homonymous indications in question will be differentiated from
each other, taking into account the need to ensure equitable
treatment of the producers concerned and that consumers are not
misled.
4. In order to facilitate the protection of geographical
indications for wines, negotiations shall be undertaken in the
Council for Trade-Related Aspects of Intellectual Property Rights
concerning the establishment of a multilateral system of
notification and registration of geographical indications for
wines eligible for protection in those Members participating in
the system.
Article 24
International Negotiations; Exceptions
1. Members agree to enter into negotiations aimed at increasing
the protection of individual geographical indications under
Article 23. The provisions of paragraphs 4-8 below shall not be
used by a Member to refuse to conduct negotiations or to conclude
bilateral or multilateral agreements. In the context of such
negotiations, Members shall be willing to consider the continued
applicability of these provisions to individual geographical
indications whose use was the subject of such negotiations.
2. The Council for Trade-Related Aspects of Intellectual
Property Rights shall keep under review the application of the
provisions of this Section; the first such review shall take
place within two years of the entry into force of the Agreement
Establishing the MTO. Any matter affecting the compliance with
the obligations under these provisions may be drawn to the
attention of the Council, which, at the request of a Member,
shall consult with any Member or Members in respect of such
matter in respect of which it has not been possible to find a
satisfactory solution through bilateral or plurilateral
consultations between the Members concerned. The Council shall
take such action as may be agreed to facilitate the operation and
further the objectives of this Section.
3. In implementing this Section, a Member shall not diminish
the protection of geographical indications that existed in that
Member immediately prior to the date of entry into force of the
Agreement Establishing the MTO.
4. Nothing in this Section shall require a Member to prevent
continued and similar use of a particular geographical indication
of another Member identifying wines or spirits in connection with
goods or services by any of its nationals or domiciliaries who
have used that geographical indication in a continuous manner
with regard to the same or related goods or services in the
territory of that Member either (a) for at least ten years
preceding the date of the Ministerial Meeting concluding the
Uruguay Round of Multilateral Trade Negotiations or (b) in good
faith preceding that date.
5. Where a trademark has been applied for or registered in good
faith, or where rights to a trademark have been acquired through
use in good faith either:
(a) before the date of application of these provisions in
that Member as defined in Part VI below; or
(b) before the geographical indication is protected in its
country of origin;
measures adopted to implement this Section shall not prejudice
eligibility for or the validity of the registration of a
trademark, or the right to use a trademark, on the basis that
such a trademark is identical with, or similar to, a geographical
indication.
6. Nothing in this Section shall require a Member to apply its
provisions in respect of a geographical indication of any other
Member with respect to goods or services for which the relevant
indication is identical with the term customary in common
language as the common name for such goods or services in the
territory of that Member. Nothing in this Section shall require
a Member to apply its provisions in respect of a geographical
indication of any other Member with respect to products of the
vine for which the relevant indication is identical with the
customary name of a grape variety existing in the territory of
that Member as of the date of entry into force of the Agreement
Establishing the MTO.
7. A Member may provide that any request made under this
Section in connection with the use or registration of a trademark
must be presented within five years after the adverse use of the
protected indication has become generally known in that Member or
after the date of registration of the trademark in that Member
provided that the trademark has been published by that date, if
such date is earlier than the date on which the adverse use
became generally known in that Member, provided that the
geographical indication is not used or registered in bad faith.
8. The provisions of this Section shall in no way prejudice the
right of any person to use, in the course of trade, his name or
the name of his predecessor in business, except where such name
is used in such a manner as to mislead the public.
9. There shall be no obligation under this Agreement to protect
geographical indications which are not or cease to be protected
in their country of origin, or which have fallen into disuse in
that country.
SECTION 4: INDUSTRIAL DESIGNS
Article 25
Requirements for Protection
1. Members shall provide for the protection of independently
created industrial designs that are new or original. Members may
provide that designs are not new or original if they do not
significantly differ from known designs or combinations of known
design features. Members may provide that such protection shall
not extend to designs dictated essentially by technical or
functional considerations.
2. Each Member shall ensure that requirements for securing
protection for textile designs, in particular in regard to any
cost, examination or publication, do not unreasonably impair the
opportunity to seek and obtain such protection. Members shall be
free to meet this obligation through industrial design law or
through copyright law.
Article 26
Protection
1. The owner of a protected industrial design shall have the
right to prevent third parties not having his consent from
making, selling or importing articles bearing or embodying a
design which is a copy, or substantially a copy, of the protected
design, when such acts are undertaken for commercial purposes.
2. Members may provide limited exceptions to the protection of
industrial designs, provided that such exceptions do not
unreasonably conflict with the normal exploitation of protected
industrial designs and do not unreasonably prejudice the
legitimate interests of the owner of the protected design, taking
account of the legitimate interests of third parties.
3. The duration of protection available shall amount to at
least ten years.
SECTION 5: PATENTS
Article 27
Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3 below,
patents shall be available for any inventions, whether products
or processes, in all fields of technology, provided that they are
new, involve an inventive step and are capable of industrial
application. Subject to paragraph 4 of Article 65, paragraph 8
of Article 70 and paragraph 3 of this Article, patents shall be
available and patent rights enjoyable without discrimination as
to the place of invention, the field of technology and whether
products are imported or locally produced.
2. Members may exclude from patentability inventions, the
prevention within their territory of the commercial exploitation
of which is necessary to protect ordre public or morality,
including to protect human, animal or plant life or health or to
avoid serious prejudice to the environment, provided that such
exclusion is not made merely because the exploitation is
prohibited by domestic law.
3. Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the
treatment of humans or animals;
(b) plants and animals other than microorganisms, and
essentially biological processes for the production of
plants or animals other than non-biological and
microbiological processes. However, Members shall
provide for the protection of plant varieties either by
patents or by an effective sui generis system or by any
combination thereof. The provisions of this sub-
paragraph shall be reviewed four years after the entry
into force of the Agreement Establishing the MTO.
Article 28
Rights Conferred
1. A patent shall confer on its owner the following exclusive
rights:
(a) where the subject matter of a patent is a product, to
prevent third parties not having his consent from the
acts of: making, using, offering for sale, selling, or
importing for these purposes that product;
(b) where the subject matter of a patent is a process, to
prevent third parties not having his consent from the
act of using the process, and from the acts of: using,
offering for sale, selling, or importing for these
purposes at least the product obtained directly by that
process.
2. Patent owners shall also have the right to assign, or
transfer by succession, the patent and to conclude licensing
contracts.
Article 29
Conditions on Patent Applicants
1. Members shall require that an applicant for a patent shall
disclose the invention in a manner sufficiently clear and
complete for the invention to be carried out by a person skilled
in the art and may require the applicant to indicate the best
mode for carrying out the invention known to the inventor at the
filing date or, where priority is claimed, at the priority date
of the application.
2. Members may require an applicant for a patent to provide
information concerning his corresponding foreign applications and
grants.
Article 30
Exceptions to Rights Conferred
Members may provide limited exceptions to the exclusive
rights conferred by a patent, provided that such exceptions do
not unreasonably conflict with a normal exploitation of the
patent and do not unreasonably prejudice the legitimate interests
of the patent owner, taking account of the legitimate interests
of third parties.
Article 31
Other Use Without Authorization of the Right Holder
Where the law of a Member allows for other use of the
subject matter of a patent without the authorization of the right
holder, including use by the government or third parties
authorized by the government, the following provisions shall be
respected:
(a) authorization of such use shall be considered on its
individual merits;
(b) such use may only be permitted if, prior to such use,
the proposed user has made efforts to obtain
authorization from the right holder on reasonable
commercial terms and conditions and that such efforts
have not been successful within a reasonable period of
time. This requirement may be waived by a Member in
the case of a national emergency or other circumstances
of extreme urgency or in cases of public non-commercial
use. In situations of national emergency or other
circumstances of extreme urgency, the right holder
shall, nevertheless, be notified as soon as reasonably
practicable. In the case of public non-commercial use,
where the government or contractor, without making a
patent search, knows or has demonstrable grounds to
know that a valid patent is or will be used by or for
the government, the right holder shall be informed
promptly;
(c) the scope and duration of such use shall be limited to
the purpose for which it was authorized, and in the
case of semi-conductor technology shall only be for
public non-commercial use or to remedy a practice
determined after judicial or administrative process to
be anti-competitive.
(d) such use shall be non-exclusive;
(e) such use shall be non-assignable, except with that part
of the enterprise or goodwill which enjoys such use;
(f) any such use shall be authorized predominantly for the
supply of the domestic market of the Member authorizing
such use;
(g) authorization for such use shall be liable, subject to
adequate protection of the legitimate interests of the
persons so authorized, to be terminated if and when the
circumstances which led to it cease to exist and are
unlikely to recur. The competent authority shall have
the authority to review, upon motivated request, the
continued existence of these circumstances;
(h) the right holder shall be paid adequate remuneration in
the circumstances of each case, taking into account the
economic value of the authorization;
(i) the legal validity of any decision relating to the
authorization of such use shall be subject to judicial
review or other independent review by a distinct higher
authority in that Member;
(j) any decision relating to the remuneration provided in
respect of such use shall be subject to judicial review
or other independent review by a distinct higher
authority in that Member;
(k) Members are not obliged to apply the conditions set
forth in sub-paragraphs (b) and (f) above where such
use is permitted to remedy a practice determined after
judicial or administrative process to be anti-
competitive. The need to correct anti-competitive
practices may be taken into account in determining the
amount of remuneration in such cases. Competent
authorities shall have the authority to refuse
termination of authorization if and when the conditions
which led to such authorization are likely to recur;
(l) where such use is authorized to permit the exploitation
of a patent ("the second patent") which cannot be
exploited without infringing another patent ("the first
patent"), the following additional conditions shall
apply:
(i) the invention claimed in the second patent shall
involve an important technical advance of
considerable economic significance in relation to
the invention claimed in the first patent;
(ii) the owner of the first patent shall be entitled to
a cross-licence on reasonable terms to use the
invention claimed in the second patent; and
(iii) the use authorized in respect of the first
patent shall be non-assignable except with
the assignment of the second patent.
Article 32
Revocation/Forfeiture
An opportunity for judicial review of any decision to revoke
or forfeit a patent shall be available.
Article 33
Term of Protection
The term of protection available shall not end before the
expiration of a period of twenty years counted from the filing
date.
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 above, 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 sub-paragraph (a) is fulfilled or
only if the condition referred to in sub-paragraph (b) is
fulfilled.
3. In the adduction of proof to the contrary, the legitimate
interests of the defendant in protecting his manufacturing and
business secrets shall be taken into account.
SECTION 6: LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS
Article 35
Relation to IPIC Treaty
Members agree to provide protection to the layout-designs
(topographies) of integrated circuits (hereinafter referred to as
"layout-designs") in accordance with Articles 2-7 (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
below, Members shall consider unlawful the following acts if
performed without the authorization of the right holder:
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 insofar 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 above, 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, he 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 sub-paragraphs (a)-(k) of
Article 31 above 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 ten 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 ten years from the date of the first commercial
exploitation wherever in the world it occurs.
3. Notwithstanding paragraphs 1 and 2 above, a Member may
provide that protection shall lapse fifteen 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 below and data submitted to
governments or governmental agencies in accordance with
paragraph 3 below.
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
so long as such information:
- 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;
- has commercial value because it is secret; and
- 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 national 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 co-operate 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 above.
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 national laws 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 national laws 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 laws in general, nor does it affect the capacity
of Members to enforce their laws 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 laws in general.
SECTION 2: CIVIL AND ADMINISTRATIVE PROCEDURES AND REMEDIES
Article 42
Fair and Equitable Procedures
Members shall make available to right holders 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 of Proof
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 sub-
paragraph (h) of Article 31 above. In other cases, the remedies
under this Part shall apply or, where these remedies are
inconsistent with national 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 his intellectual property right by an
infringer who knew or had reasonable grounds to know that he was
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 know or had no reasonable grounds to know
that he was engaged 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 such laws.
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:
(a) to prevent an infringement of any intellectual property
right from occurring, and in particular to prevent the
entry into the channels of commerce in their
jurisdiction of goods, including imported goods
immediately after customs clearance;
(b) to preserve relevant evidence in regard to the alleged
infringement.
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 his 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 above, provisional measures
taken on the basis of paragraphs 1 and 2 above 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
national law so permits or, in the absence of such a
determination, not to exceed twenty working days or thirty-one
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
Article 51
Suspension of Release by Customs Authorities
Members shall, in conformity with the provisions set out
below, adopt procedures to enable a right holder, who has
valid grounds for suspecting that the importation of counterfeit
trademark or pirated copyright goods 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.
Article 52
Application
Any right holder initiating the procedures under Article 51
above shall be required to provide adequate evidence to satisfy
the competent authorities that, under the laws of the country of
importation, there is prima facie an infringement of his
intellectual property right and to supply a sufficiently detailed
description of the goods to make them readily recognizable by the
customs authorities. The competent authorities shall inform the
applicant within a reasonable period whether they have accepted
the application and, where determined by the competent
authorities, the period for which the customs authorities will
take action.
Article 53
Security or Equivalent Assurance
1. The competent authorities shall have the authority to
require an applicant to provide a security or equivalent
assurance sufficient to protect the defendant and the competent
authorities and to prevent abuse. Such security or equivalent
assurance shall not unreasonably deter recourse to these
procedures.
2. Where pursuant to an application under this Section the
release of goods involving industrial designs, patents, layout-
designs or undisclosed information into free circulation has been
suspended by customs authorities on the basis of a decision other
than by a judicial or other independent authority, and the period
provided for in Article 55 has expired without the granting of
provisional relief by the duly empowered authority, and provided
that all other conditions for importation have been complied
with, the owner, importer, or consignee of such goods shall be
entitled to their release on the posting of a security in an
amount sufficient to protect the right holder for any
infringement. Payment of such security shall not prejudice any
other remedy available to the right holder, it being understood
that the security shall be released if the right holder fails to
pursue his right of action within a reasonable period of time.
Article 54
Notice of Suspension
The importer and the applicant shall be promptly notified of
the suspension of the release of goods according to Article 51
above.
Article 55
Duration of Suspension
If, within a period not exceeding ten working days after the
applicant has been served notice of the suspension, the customs
authorities have not been informed that proceedings leading to a
decision on the merits of the case have been initiated by a party
other than the defendant, or that the duly empowered authority
has taken provisional measures prolonging the suspension of the
release of the goods, the goods shall be released, provided that
all other conditions for importation or exportation have been
complied with; in appropriate cases, this time-limit may be
extended by another ten working days. If proceedings leading to
a decision on the merits of the case have been initiated, 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, whether these measures shall be modified,
revoked or confirmed. Notwithstanding the above, where the
suspension of the release of goods is carried out or continued in
accordance with a provisional judicial measure, the provisions of
Article 50, paragraph 6 above shall apply.
Article 56
Indemnification of the Importer
and of the Owner of the Goods
Relevant authorities shall have the authority to order the
applicant to pay the importer, the consignee and the owner of the
goods appropriate compensation for any injury caused to them
through the wrongful detention of goods or through the detention
of goods released pursuant to Article 55 above.
Article 57
Right of Inspection and Information
Without prejudice to the protection of confidential
information, Members shall provide the competent authorities the
authority to give the right holder sufficient opportunity to have
any product detained by the customs authorities inspected in
order to substantiate his claims. The competent authorities
shall also have authority to give the importer an equivalent
opportunity to have any such product inspected. Where a positive
determination has been made on the merits of a case, Members may
provide the competent authorities the authority to inform the
right holder of the names and addresses of the consignor, the
importer and the consignee and of the quantity of the goods in
question.
Article 58
Ex Officio Action
Where Members require competent authorities to act upon
their own initiative and to suspend the release of goods in
respect of which they have acquired prima facie evidence that an
intellectual property right is being infringed:
(a) the competent authorities may at any time seek from the
right holder any information that may assist them to
exercise these powers;
(b) the importer and the right holder shall be promptly
notified of the suspension. Where the importer has
lodged an appeal against the suspension with the
competent authorities, the suspension shall be subject
to the conditions, mutatis mutandis, set out at
Article 55 above;
(c) Members shall only exempt both public authorities and
officials from liability to appropriate remedial
measures where actions are taken or intended in good
faith.
Article 59
Remedies
Without prejudice to other rights of action open to the
right holder and subject to the right of the defendant to seek
review by a judicial authority, competent authorities shall have
the authority to order the destruction or disposal of infringing
goods in accordance with the principles set out in Article 46
above. In regard to counterfeit trademark goods, the authorities
shall not allow the re-exportation of the infringing goods in an
unaltered state or subject them to a different customs procedure,
other than in exceptional circumstances.
Article 60
De Minimis Imports
Members may exclude from the application of the above
provisions small quantities of goods of a non-commercial nature
contained in travellers' personal luggage or sent in small
consignments.
SECTION 5: CRIMINAL PROCEDURES
Article 61
Members shall provide for criminal procedures and penalties
to be applied at least in cases of wilful trademark
counterfeiting or copyright piracy on a commercial scale.
Remedies available shall include imprisonment and/or monetary
fines sufficient to provide a deterrent, consistently with the
level of penalties applied for crimes of a corresponding gravity.
In appropriate cases, remedies available shall also include the
seizure, forfeiture and destruction of the infringing goods and
of any materials and implements the predominant use of which has
been in the commission of the offence. Members may provide for
criminal procedures and penalties to be applied in other cases of
infringement of intellectual property rights, in particular where
they are committed wilfully and on a commercial scale.
PART IV: ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY
RIGHTS AND RELATED INTER-PARTES PROCEDURES
Article 62
1. Members may require, as a condition of the acquisition or
maintenance of the intellectual property rights provided for
under Sections 2-6 of Part II of this Agreement, compliance with
reasonable procedures and formalities. Such procedures and
formalities shall be consistent with the provisions of this
Agreement.
2. Where the acquisition of an intellectual property right is
subject to the right being granted or registered, Members shall
ensure that the procedures for grant or registration, subject to
compliance with the substantive conditions for acquisition of the
right, permit the granting or registration of the right within a
reasonable period of time so as to avoid unwarranted curtailment
of the period of protection.
3. Article 4 of the Paris Convention (1967) shall apply mutatis
mutandis to service marks.
4. Procedures concerning the acquisition or maintenance of
intellectual property rights and, where the national law provides
for such procedures, administrative revocation and inter partes
procedures such as opposition, revocation and cancellation, shall
be governed by the general principles set out in paragraphs 2 and
3 of Article 41.
5. Final administrative decisions in any of the procedures
referred to under paragraph 4 above shall be subject to review by
a judicial or quasi-judicial authority. However, there shall be
no obligation to provide an opportunity for such review of
decisions in cases of unsuccessful opposition or administrative
revocation, provided that the grounds for such procedures can be
the subject of invalidation procedures.
PART V: DISPUTE PREVENTION AND SETTLEMENT
Article 63
Transparency
1. Laws and regulations, and final judicial decisions and
administrative rulings of general application, made effective by
any Member pertaining to the subject matter of this Agreement
(the availability, scope, acquisition, enforcement and prevention
of the abuse of intellectual property rights) shall be published,
or where such publication is not practicable made publicly
available, in a national language, in such a manner as to enable
governments and right holders to become acquainted with them.
Agreements concerning the subject matter of this Agreement which
are in force between the government or a governmental agency of
any Member and the government or a governmental agency of any
other Member shall also be published.
2. Members shall notify the laws and regulations referred to in
paragraph 1 above to the Council for Trade-Related Aspects of
Intellectual Property Rights in order to assist that Council in
its review of the operation of this Agreement. The Council shall
attempt to minimize the burden on Members in carrying out this
obligation and may decide to waive the obligation to notify such
laws and regulations directly to the Council if consultations
with the World Intellectual Property Organization on the
establishment of a common register containing these laws and
regulations are successful. The Council shall also consider in
this connection any action required regarding notifications
pursuant to the obligations under this Agreement stemming from
the provisions of Article 6ter of the Paris Convention (1967).
3. Each Member shall be prepared to supply, in response to a
written request from another Member, information of the sort
referred to in paragraph 1 above. A Member, having reason to
believe that a specific judicial decision or administrative
ruling or bilateral agreement in the area of intellectual
property rights affects its rights under this Agreement, may also
request in writing to be given access to or be informed in
sufficient detail of such specific judicial decisions or
administrative rulings or bilateral agreements.
4. Nothing in paragraphs 1 to 3 above shall require Members to
disclose confidential information which would impede law
enforcement or otherwise be contrary to the public interest or
would prejudice the legitimate commercial interests of particular
enterprises, public or private.
Article 64
Dispute Settlement
1. The provisions of Articles XXII and XXIII of the General
Agreement on Tariffs and Trade 1994 as elaborated and applied by
the Understanding on Rules and Procedures Governing the
Settlement of Disputes shall apply to consultations and the
settlement of disputes under this Agreement except as otherwise
specifically provided herein.
2. Sub-paragraphs XXIII:1(b) and XXIII:1(c) of the General
Agreement on Tariffs and Trade 1994 shall not apply to the
settlement of disputes under this Agreement for a period of five
years from the entry into force of the Agreement establishing the
Multilateral Trade Organization.
3. During the time period referred to in paragraph 2, the TRIPS
Council shall examine the scope and modalities for
Article XXIII:1(b) and Article XXIII:1(c)-type complaints made
pursuant to this Agreement, and submit its recommendations to the
Ministerial Conference for approval. Any decision of the
Ministerial Conference to approve such recommendations or to
extend the period in paragraph 2 shall be made only by consensus,
and approved recommendations shall be effective for all Members
without further formal acceptance process.
PART VI: TRANSITIONAL ARRANGEMENTS
Article 65
Transitional Arrangements
1. Subject to the provisions of paragraphs 2, 3 and 4 below, no
Member shall be obliged to apply the provisions of this Agreement
before the expiry of a general period of one year following the
date of entry into force of the Agreement Establishing the MTO.
2. Any developing country Member is entitled to delay for a
further period of four years the date of application, as defined
in paragraph 1 above, of the provisions of this Agreement other
than Articles 3, 4 and 5 of Part I.
3. Any other Member which is in the process of transformation
from a centrally-planned into a market, free-enterprise economy
and which is undertaking structural reform of its intellectual
property system and facing special problems in the preparation
and implementation of intellectual property laws, may also
benefit from a period of delay as foreseen in paragraph 2 above.
4. To the extent that a developing country Member is obliged by
this Agreement to extend product patent protection to areas of
technology not so protectable in its territory on the general
date of application of this Agreement for that Member, as defined
in paragraph 2 above, it may delay the application of the
provisions on product patents of Section 5 of Part II of this
Agreement to such areas of technology for an additional period of
five years.
5. Any Member availing itself of a transitional period under
paragraphs 1, 2, 3 or 4 above shall ensure that any changes in
its domestic laws, regulations and practice made during that
period do not result in a lesser degree of consistency with the
provisions of this Agreement.
Article 66
Least-Developed Country Members
1. In view of their special needs and requirements, their
economic, financial and administrative constraints, and their
need for flexibility to create a viable technological base,
least-developed country Members shall not be required to apply
the provisions of this Agreement, other than Articles 3, 4 and 5,
for a period of 10 years from the date of application as defined
under paragraph 1 of Article 65 above. The Council shall, upon
duly motivated request by a least-developed country Member,
accord extensions of this period.
2. Developed country Members shall provide incentives to
enterprises and institutions in their territories for the purpose
of promoting and encouraging technology transfer to least-
developed country Members in order to enable them to create a
sound and viable technological base.
Article 67
Technical Cooperation
In order to facilitate the implementation of this Agreement,
developed country Members shall provide, on request and on
mutually agreed terms and conditions, technical and financial
cooperation in favour of developing and least-developed country
Members. Such cooperation shall include assistance in the
preparation of domestic legislation on the protection and
enforcement of intellectual property rights as well as on the
prevention of their abuse, and shall include support regarding
the establishment or reinforcement of domestic offices and
agencies relevant to these matters, including the training of
personnel.
PART VII: INSTITUTIONAL ARRANGEMENTS; FINAL PROVISIONS
Article 68
Council for Trade-Related Aspects of
Intellectual Property Rights
The Council for Trade-Related Aspects of Intellectual
Property Rights shall monitor the operation of this Agreement
and, in particular, Members' compliance with their obligations
hereunder, and shall afford Members the opportunity of consulting
on matters relating to the trade-related aspects of intellectual
property rights. It shall carry out such other responsibilities
as assigned to it by the Members, and it shall, in particular,
provide any assistance requested by them in the context of
dispute settlement procedures. In carrying out its functions,
the Council may consult with and seek information from any source
it deems appropriate. In consultation with the World
Intellectual Property Organization, the Council shall seek to
establish, within one year of its first meeting, appropriate
arrangements for cooperation with bodies of that Organization.
Article 69
International Cooperation
Members agree to cooperate with each other with a view to
eliminating international trade in goods infringing intellectual
property rights. For this purpose, they shall establish and
notify contact points in their national administrations and be
ready to exchange information on trade in infringing goods. They
shall, in particular, promote the exchange of information and
cooperation between customs authorities with regard to trade in
counterfeit trademark goods and pirated copyright goods.
Article 70
Protection of Existing Subject Matter
1. This Agreement does not give rise to obligations in respect
of acts which occurred before the date of application of the
Agreement for the Member in question.
2. Except as otherwise provided for in this Agreement, this
Agreement gives rise to obligations in respect of all subject
matter existing at the date of application of this Agreement for
the Member in question, and which is protected in that Member on
the said date, or which meets or comes subsequently to meet the
criteria for protection under the terms of this Agreement. In
respect of this paragraph and paragraphs 3 and 4 below, copyright
obligations with respect to existing works shall be solely
determined under Article 18 of the Berne Convention (1971), and
obligations with respect to the rights of producers of phonograms
and performers in existing phonograms shall be determined solely
under Article 18 of the Berne Convention (1971) as made
applicable under paragraph 6 of Article 14 of this Agreement.
3. There shall be no obligation to restore protection to
subject matter which on the date of application of this Agreement
for the Member in question has fallen into the public domain.
4. In respect of any acts in respect of specific objects
embodying protected subject matter which become infringing under
the terms of legislation in conformity with this Agreement, and
which were commenced, or in respect of which a significant
investment was made, before the date of acceptance of the
Agreement Establishing the MTO by that Member, any Member may
provide for a limitation of the remedies available to the right
holder as to the continued performance of such acts after the
date of application of the Agreement for that Member. In such
cases the Member shall, however, at least provide for the payment
of equitable remuneration.
5. A Member is not obliged to apply the provisions of
Article 11 and of paragraph 4 of Article 14 with respect to
originals or copies purchased prior to the date of application of
this Agreement for that Member.
6. Members shall not be required to apply Article 31, or the
requirement in paragraph 1 of Article 27 that patent rights shall
be enjoyable without discrimination as to the field of
technology, to use without the authorization of the right holder
where authorization for such use was granted by the government
before the date this Agreement became known.
7. In the case of intellectual property rights for which
protection is conditional upon registration, applications for
protection which are pending on the date of application of this
Agreement for the Member in question shall be permitted to be
amended to claim any enhanced protection provided under the
provisions of this Agreement. Such amendments shall not include
new matter.
8. Where a Member does not make available as of the date of
entry into force of the Agreement Establishing the MTO patent
protection for pharmaceutical and agricultural chemical products
commensurate with its obligations under Article 27, that Member
shall:
(i) notwithstanding the provisions of Part VI above,
provide as from the date of entry into force of the
Agreement Establishing the MTO a means by which
applications for patents for such inventions can be
filed;
(ii) apply to these applications, as of the date of
application of this Agreement, the criteria for
patentability as laid down in this Agreement as if
those criteria were being applied on the date of filing
in that Member or, where priority is available and
claimed, the priority date of the application;
(iii) provide patent protection in accordance with this
Agreement as from the grant of the patent and for
the remainder of the patent term, counted from the
filing date in accordance with Article 33 of this
Agreement, for those of these applications that
meet the criteria for protection referred to in
sub-paragraph (ii) above.
9. Where a product is the subject of a patent application in a
Member in accordance with paragraph 8(i) above, exclusive
marketing rights shall be granted, notwithstanding the provisions
of Part VI above, for a period of five years after obtaining
market approval in that Member or until a product patent is
granted or rejected in that Member, whichever period is shorter,
provided that, subsequent to the entry into force of the
Agreement Establishing the MTO, a patent application has been
filed and a patent granted for that product in another Member and
marketing approval obtained in such other Member.
Article 71
Review and Amendment
1. The Council for Trade-Related Aspects of Intellectual
Property Rights shall review the implementation of this Agreement
after the expiration of the transitional period referred to in
paragraph 2 of Article 65 above. The Council shall, having
regard to the experience gained in its implementation, review it
two years after that date, and at identical intervals thereafter.
The Council may also undertake reviews in the light of any
relevant new developments which might warrant modification or
amendment of this Agreement.
2. Amendments merely serving the purpose of adjusting to higher
levels of protection of intellectual property rights achieved,
and in force, in other multilateral agreements and accepted under
those agreements by all Members of the MTO may be referred to the
Ministerial Conference for action in accordance with Article X,
paragraph 6, of the Agreement Establishing the MTO on the basis
of a consensus proposal from the Council for Trade-Related
Aspects of Intellectual Property Rights.
Article 72
Reservations
Reservations may not be entered in respect of any of the
provisions of this Agreement without the consent of the other
Members.
Article 73
Security Exceptions
Nothing in this Agreement shall be construed:
(a) to require any Member to furnish any information the
disclosure of which it considers contrary to its
essential security interests; or
(b) to prevent any Member from taking any action which it
considers necessary for the protection of its essential
security interests;
(i) relating to fissionable materials or the materials
from which they are derived;
(ii) relating to the traffic in arms, ammunition and
implements of war and to such traffic in other
goods and materials as is carried on directly or
indirectly for the purpose of supplying a military
establishment;
(iii) taken in time of war or other emergency in
international relations; or
(c) to prevent any Member from taking any action in
pursuance of its obligations under the United Nations
Charter for the maintenance of international peace and
security.