ANNEX 1C
AGREEMENT ON TRADE-RELATED ASPECTS OF
INTELLECTUAL PROPERTY RIGHTS
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
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 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 WTO and the
World Intellectual Property Organization (referred to in this Agreement
as "WIPO") as well as other relevant international
organizations;
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 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 through 7 of
Part II.
3. Members shall accord the treatment provided for in
this Agreement to the nationals of other Members.[1] 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 WTO members of those
conventions.[2] 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 (the "Council for TRIPS").
Article 2
Intellectual Property Conventions
1. In respect of Parts II, III and IV of this
Agreement, Members shall comply with Articles 1 through 12, and
Article 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[3] of intellectual property, subject to the
exceptions already provided in, respectively, the Paris Convention
(1967), the Berne Convention (1971), the Rome Convention or 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 (1971) or paragraph 1(b) of
Article 16 of the Rome Convention shall make a notification as
foreseen in those provisions to the Council for TRIPS.
2. Members may avail themselves of the exceptions
permitted under paragraph 1 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 or
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 WTO Agreement, provided that such agreements are
notified to the Council for TRIPS 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 do not apply to
procedures provided in multilateral agreements concluded under the
auspices of WIPO 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 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 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 the Berne Convention
1. Members shall comply with Articles 1 through 21 of the Berne
Convention (1971) and the Appendix thereto. 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 50 years from the end of the calendar year of
authorized publication, or, failing such authorized publication within
50 years from the making of the work, 50 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 a
Member's law. If on 15
April 1994 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 50 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
shall last for at least 20 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, 2 and 3, 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 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 the owner’s
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, Members shall
take account of the knowledge of the trademark in the relevant sector of
the public, including knowledge in the Member concerned which has been
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 the 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 protection under paragraphs 1, 2 and 3 shall be
applicable against 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.[4]
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 a Member's 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. 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 TRIPS 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 through 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 TRIPS 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 WTO Agreement. 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 WTO
Agreement.
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 10 years preceding 15 April 1994 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; 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 WTO Agreement.
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, that
person’s name or the name of that person’s 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 the owner’s 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 10 years.
SECTION 5: PATENTS
Article 27
Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and
3, 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.[5] 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 their 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 micro-organisms, 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 subparagraph shall be reviewed four years after the date of entry
into force of the WTO Agreement.
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 the owner’s consent from the acts of: making, using, offering for sale, selling, or importing[6] for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent
third parties not having the owner’s 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 the applicant’s 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[7] 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
subparagraphs (b) and (f) 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.[8]
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.
(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:
(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 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.
Article 52
Application
Any right holder initiating the
procedures under Article 51 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 the right holder’s 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 the 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.
Article 55
Duration of Suspension
If, within a period not exceeding 10 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
10 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 paragraph 6 of Article 50 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.
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 goods detained by the customs authorities
inspected in order to substantiate the right holder’s claims. The competent authorities shall also have authority to give the
importer an equivalent opportunity to have any such goods 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;
(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. 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 through 6 of Part II, 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 a Member's 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 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 a
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 a Member and the
government or a governmental agency of another Member shall also be
published.
2. Members shall notify the laws and regulations
referred to in paragraph 1 to the Council for TRIPS 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 WIPO 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. 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, 2 and 3 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 GATT 1994 as
elaborated and applied by the Dispute Settlement Understanding shall
apply to consultations and the settlement of disputes under this
Agreement except as otherwise specifically provided herein.
2. Subparagraphs 1(b) and 1(c) of Article XXIII of
GATT 1994 shall not apply to the settlement of disputes under this
Agreement for a period of five years from the date of entry into force
of the WTO Agreement.
3. During the time period referred to in paragraph 2,
the Council for TRIPS shall examine the scope and modalities for
complaints of the type provided for under subparagraphs 1(b) and 1(c) of
Article XXIII of GATT 1994 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, 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 WTO Agreement.
2. A developing country Member is entitled to delay
for a further period of four years the date of application, as defined
in paragraph 1, of the provisions of this Agreement other than
Articles 3, 4 and 5.
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 and regulations, may also
benefit from a period of delay as foreseen in paragraph 2.
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,
it may delay the application of the provisions on product patents of
Section 5 of Part II to such areas of technology for an
additional period of five years.
5. A Member availing itself of a transitional period
under paragraphs 1, 2, 3 or 4 shall ensure that any changes in its 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 the special needs and requirements of least-developed
country Members, their economic, financial and administrative
constraints, and their need for flexibility to create a viable
technological base, such 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. The
Council for TRIPS 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
laws and regulations 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 TRIPS 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 for TRIPS may consult
with and seek information from any source it deems appropriate. In consultation with WIPO, 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
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,
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 WTO Agreement 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 this 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 WTO Agreement patent protection for
pharmaceutical and agricultural chemical products commensurate with its
obligations under Article 27, that Member shall:
(a) notwithstanding the provisions of Part VI, provide as from
the date of entry into force of the WTO Agreement a means by which
applications for patents for such inventions can be filed;
(b) 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; and
(c) 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 subparagraph (b).
9. Where a product is the subject of a patent
application in a Member in accordance with paragraph 8(a),
exclusive marketing rights shall be granted, notwithstanding the
provisions of Part VI, for a period of five years after obtaining
marketing 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 WTO Agreement, 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 TRIPS shall review the implementation of this
Agreement after the expiration
of the transitional period referred to in paragraph 2 of Article 65. 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 WTO may be referred to the Ministerial
Conference for action in accordance with paragraph 6 of Article X
of the WTO Agreement on the basis of a consensus proposal from the
Council for TRIPS.
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 a Member to furnish any information the disclosure of
which it considers contrary to its essential security interests; or
(b) to prevent a 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 a Member from taking any action in pursuance of its
obligations under the United Nations Charter for the maintenance of
international peace and security.
