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 back to top
Article
35
Relation to the IPIC Treaty
Members
agree to provide protection to the layout-designs
(topographies) of integrated circuits (referred to in
this Agreement as “layout-designs”) in
accordance with Articles 2 through 7 (other than
paragraph 3 of Article 6), Article 12 and
paragraph 3 of Article 16 of the Treaty on
Intellectual Property in Respect of Integrated Circuits
and, in addition, to comply with the following
provisions.
Article 36
Scope of the Protection
Subject
to the provisions of paragraph 1 of Article 37,
Members shall consider unlawful the following acts if
performed without the authorization of the right
holder: (9)
importing, selling, or otherwise distributing for
commercial purposes a protected layout-design, an
integrated circuit in which a protected layout-design is
incorporated, or an article incorporating such an
integrated circuit only in so far as it continues to
contain an unlawfully reproduced layout-design.
Article 37
Acts Not Requiring the Authorization of the Right Holder
1. Notwithstanding
Article 36, no Member shall consider unlawful the
performance of any of the acts referred to in that
Article in respect of an integrated circuit incorporating
an unlawfully reproduced layout-design or any article
incorporating such an integrated circuit where the person
performing or ordering such acts did not know and had no
reasonable ground to know, when acquiring the integrated
circuit or article incorporating such an integrated
circuit, that it incorporated an unlawfully reproduced
layout-design. Members shall provide that, after the time
that such person has received sufficient notice that the
layout-design was unlawfully reproduced, that person may
perform any of the acts with respect to the stock on hand
or ordered before such time, but shall be liable to pay
to the right holder a sum equivalent to a reasonable
royalty such as would be payable under a freely
negotiated licence in respect of such a layout-design.
2. The
conditions set out in subparagraphs (a) through (k) of
Article 31 shall apply mutatis mutandis in
the event of any non-voluntary licensing of a
layout-design or of its use by or for the government
without the authorization of the right holder.
Article 38
Term of Protection
1. In
Members requiring registration as a condition of
protection, the term of protection of layout-designs
shall not end before the expiration of a period of 10
years counted from the date of filing an application for
registration or from the first commercial exploitation
wherever in the world it occurs.
2. In
Members not requiring registration as a condition for
protection, layout-designs shall be protected for a term
of no less than 10 years from the date of the first
commercial exploitation wherever in the world it occurs.
3. Notwithstanding
paragraphs 1 and 2, a Member may provide that protection
shall lapse 15 years after the creation of the
layout-design.
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