PART SIX

INTELLECTUAL PROPERTY

Chapter Seventeen

Intellectual Property

Article 1701: Nature and Scope of Obligations

1. Each Party shall provide in its territory to the nationals

of another Party adequate and effective protection and

enforcement of intellectual property rights, while ensuring that

measures to enforce intellectual property rights do not

themselves become barriers to legitimate trade.

2. To provide adequate and effective protection and enforcement

of intellectual property rights, each Party shall, at a minimum,

give effect to this Chapter and to the substantive provisions of:

(a) the Geneva Convention for the Protection of Producers

of Phonograms Against Unauthorized Duplication of their

Phonograms, 1971 (Geneva Convention);

(b) the Berne Convention for the Protection of Literary and

Artistic Works, 1971 (Berne Convention);

(c) the Paris Convention for the Protection of Industrial

Property, 1967 (Paris Convention); and

(d) the International Convention for the Protection of New

Varieties of Plants, 1978 (UPOV Convention), or the

International Convention for the Protection of New

Varieties of Plants, 1991 (UPOV Convention).

If a Party has not acceded to the specified text of any such

Conventions on or before the date of entry into force of this

Agreement, it shall make every effort to accede.

3. Paragraph 2 shall apply, except as provided in Annex 1701.3.

Article 1702: More Extensive Protection

A Party may implement in its domestic law more extensive

protection of intellectual property rights than is required under

this Agreement, provided that such protection is not inconsistent

with this Agreement.

Article 1703: National Treatment

1. Each Party shall accord to nationals of another Party

treatment no less favorable than that it accords to its own

nationals with regard to the protection and enforcement of all

intellectual property rights. In respect of sound recordings,

each Party shall provide such treatment to producers and

performers of another Party, except that a Party may limit rights

of performers of another Party in respect of secondary uses of

sound recordings to those rights its nationals are accorded in

the territory of such other Party.

2. No Party may, as a condition of according national treatment

under this Article, require right holders to comply with any

formalities or conditions in order to acquire rights in respect

of copyright and related rights.

3. A Party may derogate from paragraph 1 in relation to its

judicial and administrative procedures for the protection or

enforcement of intellectual property rights, including any

procedure requiring a national of another Party to designate for

service of process an address in the Party's territory or to

appoint an agent in the Party's territory, if the derogation is

consistent with the relevant Convention listed in Article

1701(2), provided that such derogation:

(a) is necessary to secure compliance with measures that

are not inconsistent with this Chapter; and

(b) is not applied in a manner that would constitute a

disguised restriction on trade.

4. No Party shall have any obligation under this Article with

respect 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 1704: Control of Abusive or Anticompetitive Practices or

Conditions

Nothing in this Chapter shall prevent a Party from

specifying in its domestic law 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. A Party may adopt or maintain, consistent with

the other provisions of this Agreement, appropriate measures to

prevent or control such practices or conditions.

Article 1705: Copyright

1. Each Party shall protect the works covered by Article 2 of

the Berne Convention, including any other works that embody

original expression within the meaning of that Convention. In

particular:

(a) all types of computer programs are literary works

within the meaning of the Berne Convention and each

Party shall protect them as such; and

(b) 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.

The protection a Party provides under subparagraph (b) shall not

extend to the data or material itself, or prejudice any copyright

subsisting in that data or material.

2. Each Party shall provide to authors and their successors in

interest those rights enumerated in the Berne Convention in

respect of works covered by paragraph 1, including the right to

authorize or prohibit:

(a) the importation into the Party's territory of copies of

the work made without the right holder's authorization;

(b) the first public distribution of the original and each

copy of the work by sale, rental or otherwise;

(c) the communication of a work to the public; and

(d) the commercial rental of the original or a copy of a

computer program.

Subparagraph (d) shall not apply where the copy of the computer

program is not itself an essential object of the rental. Each

Party shall provide that putting the original or a copy of a

computer program on the market with the right holder's consent

shall not exhaust the rental right.

3. Each Party shall provide that for copyright and related

rights:

(a) any person acquiring or holding economic rights may

freely and separately transfer such rights by contract

for purposes of their exploitation and enjoyment by the

transferee; and

(b) any person acquiring or holding such economic rights by

virtue of a contract, including contracts of employment

underlying the creation of works and sound recordings,

shall be able to exercise those rights in its own name

and enjoy fully the benefits derived from those rights.

4. Each Party shall provide that, where the term of protection

of a work, other than a photographic work or a work of applied

art, is to be calculated on a basis other than the life of a

natural person, the term shall be not less than 50 years from the

end of the calendar year of the first authorized publication of

the work, 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.

5. Each Party shall confine limitations or exceptions to the

rights provided for in this Article to certain special cases that

do not conflict with a normal exploitation of the work and do not

unreasonably prejudice the legitimate interests of the right

holder.

6. No Party may grant translation and reproduction licenses

permitted under the Appendix to the Berne Convention where

legitimate needs in that Party's territory for copies or

translations of the work could be met by the right holder's

voluntary actions but for obstacles created by the Party's

measures.

7. Each Party shall comply with the requirements set out in

Annex 1705.7.

Article 1706: Sound Recordings

1. Each Party shall provide to the producer of a sound

recording the right to authorize or prohibit:

(a) the direct or indirect reproduction of the sound

recording;

(b) the importation into the Party's territory of copies of

the sound recording made without the producer's

authorization;

(c) the first public distribution of the original and each

copy of the sound recording by sale, rental or

otherwise; and

(d) the commercial rental of the original or a copy of the

sound recording, except where expressly otherwise

provided in a contract between the producer of the

sound recording and the authors of the works fixed

therein.

Each Party shall provide that putting the original or a copy of a

sound recording on the market with the right holder's consent

shall not exhaust the rental right.

2. Each Party shall provide a term of protection for sound

recordings of at least 50 years from the end of the calendar year

in which the fixation was made.

3. Each Party shall confine limitations or exceptions to the

rights provided for in this Article to certain special cases that

do not conflict with a normal exploitation of the sound recording

and do not unreasonably prejudice the legitimate interests of the

right holder.

Article 1707: Protection of Encrypted Program-Carrying Satellite

Signals

Within one year from the date of entry into force of this

Agreement, each Party shall:

(a) make it a criminal offense to manufacture, import,

sell, lease or otherwise make available a device or

system that is primarily of assistance in decoding an

encrypted program-carrying satellite signal without the

authorization of the lawful distributor of such signal;

and

(b) make it a civil offense to receive, in connection with

commercial activities, or further distribute, an

encrypted program-carrying satellite signal that has

been decoded without the authorization of the lawful

distributor of the signal or to engage in any activity

prohibited under subparagraph (a).

Each Party shall provide that any civil offense established under

subparagraph (b) shall be actionable by any person that holds an

interest in the content of such signal.

Article 1708: Trademarks

1. For purposes of this Agreement, a trademark consists of any

sign, or any combination of signs, capable of distinguishing the

goods or services of one person from those of another, including

personal names, designs, letters, numerals, colors, figurative

elements, or the shape of goods or of their packaging.

Trademarks shall include service marks and collective marks, and

may include certification marks. A Party may require, as a

condition for registration that a sign be visually perceptible.

2. Each Party shall provide to the owner of a registered

trademark the right to prevent all persons not having the owner's

consent from using in commerce identical or similar signs for

goods or services that are identical or similar to those goods or

services in respect of which the owner's trademark is registered,

where such use would result in a likelihood of confusion. In the

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 prior rights, nor

shall they affect the possibility of a Party making rights

available on the basis of use.

3. A Party may make registrability depend on use. However,

actual use of a trademark shall not be a condition for filing an

application for registration. No Party may refuse an application

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 for registration.

4. Each Party shall provide a system for the registration of

trademarks, which shall include:

(a) examination of applications;

(b) notice to be given to an applicant of the reasons for

the refusal to register a trademark;

(c) a reasonable opportunity for the applicant to respond

to the notice;

(d) publication of each trademark either before or promptly

after it is registered; and

(e) a reasonable opportunity for interested persons to

petition to cancel the registration of a trademark.

A Party may provide for a reasonable opportunity for interested

persons to oppose the registration of a trademark.

5. The nature of the goods or services to which a trademark is

to be applied shall in no case form an obstacle to the

registration of the trademark.

6. Article 6bis of the Paris Convention shall apply, with such

modifications as are necessary, 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 the Party's territory obtained as a result

of the promotion of the trademark. No Party may require that the

reputation of the trademark extend beyond the sector of the

public that normally deals with the relevant goods or services.

7. Each Party shall provide that the initial registration of a

trademark be for a term of at least 10 years and that the

registration be indefinitely renewable for terms of not less than

10 years when conditions for renewal have been met.

8. Each Party shall require the use of a trademark to maintain

a registration. The registration may be canceled for the reason

of non-use only after an uninterrupted period of at least two

years of non-use, unless valid reasons based on the existence of

obstacles to such use are shown by the trademark owner. Each

Party shall recognize, as valid reasons for non-use,

circumstances arising independently of the will of the trademark

owner that constitute an obstacle to the use of the trademark,

such as import restrictions on, or other government requirements

for, goods or services identified by the trademark.

9. Each Party shall recognize use of a trademark by a person

other than the trademark owner, where such use is subject to the

owner's control, as use of the trademark for purposes of

maintaining the registration.

10. No Party shall encumber the use of a trademark in commerce

by special requirements, such as a use that reduces the

trademark's function as an indication of source or a use with

another trademark.

11. A Party 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 its

trademark with or without the transfer of the business to which

the trademark belongs.

12. A Party may provide limited exceptions to the rights

conferred by a trademark, such as fair use of descriptive terms,

provided that such exceptions take into account the legitimate

interests of the trademark owner and of other persons.

13. Each Party shall prohibit the registration as a trademark of

words, at least in English, French or Spanish, that generically

designate goods or services or types of goods or services to

which the trademark applies.

14. Each Party shall refuse to register trademarks that consist

of or comprise immoral, deceptive or scandalous matter, or matter

that may disparage or falsely suggest a connection with persons,

living or dead, institutions, beliefs or any Party's national

symbols, or bring them into contempt or disrepute.

Article 1709: Patents

1. Subject to paragraphs 2 and 3, each Party shall make patents

available for any inventions, whether products or processes, in

all fields of technology, provided that such inventions are new,

result from an inventive step and are capable of industrial

application. For the purposes of this Article, a Party may deem

the terms "inventive step" and "capable of industrial

application" to be synonymous with the terms "non-obvious" and

"useful", respectively.

2. A Party may exclude from patentability inventions if

preventing in its territory the commercial exploitation of the

inventions is necessary to protect ordre public or morality,

including to protect human, animal or plant life or health or to

avoid serious prejudice to nature or the environment, provided

that the exclusion is not based solely on the ground that the

Party prohibits commercial exploitation in its territory of the

subject matter of the patent.

3. A Party 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

(c) essentially biological processes for the production of

plants or animals, other than non-biological and

microbiological processes for such production.

Notwithstanding subparagraph (b), each Party shall provide for

the protection of plant varieties through patents, an effective

scheme of sui generis protection, or both.

4. If a Party has not made available product patent protection

for pharmaceutical or agricultural chemicals commensurate with

paragraph 1:

(a) as of January 1, 1992, for subject matter that relates

to naturally occurring substances prepared or produced

by, or significantly derived from, microbiological

processes and intended for food or medicine; and

(b) as of July 1, 1991, for any other subject matter,

that Party shall provide to the inventor of any such product or

its assignee the means to obtain product patent protection for

such product for the unexpired term of the patent for such

product granted in another Party, as long as the product has not

been marketed in the Party providing protection under this

paragraph and the person seeking such protection makes a timely

request.

5. Each Party shall provide that:

(a) where the subject matter of a patent is a product, the

patent shall confer on the patent owner the right to

prevent other persons from making, using or selling the

subject matter of the patent, without the patent

owner's consent; and

(b) where the subject matter of a patent is a process, the

patent shall confer on the patent owner the right to

prevent other persons from using that process and from

using, selling, or importing at least the product

obtained directly by that process, without the patent

owner's consent.

6. A Party 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 into account the legitimate interests

of other persons.

7. Subject to paragraphs 2 and 3, patents shall be available

and patent rights enjoyable without discrimination as to the

field of technology, the territory of the Party where the

invention was made and whether products are imported or locally

produced.

8. A Party may revoke a patent only when:

(a) grounds exist that would have justified a refusal to

grant the patent; or

(b) the grant of a compulsory license has not remedied the

lack of exploitation of the patent.

9. Each Party shall permit patent owners to assign and transfer

by succession their patents, and to conclude licensing contracts.

10. Where the law of a Party allows for use of the subject

matter of a patent, other than that use allowed under paragraph

6, without the authorization of the right holder, including use

by the government or other persons authorized by the government,

the Party shall respect the following provisions:

(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 such efforts have

not been successful within a reasonable period of time.

The requirement to make such efforts may be waived by a

Party 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;

(d) such use shall be non-exclusive;

(e) such use shall be non-assignable, except with that part

of the enterprise or goodwill that enjoys such use;

(f) any such use shall be authorized predominantly for the

supply of the Party's domestic market;

(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 that 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 shall be subject to judicial or other

independent review by a distinct higher authority;

(j) any decision relating to the remuneration provided in

respect of such use shall be subject to judicial or

other independent review by a distinct higher

authority;

(k) the Party shall not be obliged to apply the conditions

set out in subparagraphs (b) and (f) where such use is

permitted to remedy a practice determined after

judicial or administrative process to be

anticompetitive. The need to correct anticompetitive

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

that led to such authorization are likely to recur;

(l) the Party shall not authorize the use of the subject

matter of a patent to permit the exploitation of

another patent except as a remedy for an adjudicated

violation of domestic laws regarding anticompetitive

practices.

11. Where the subject matter of a patent is a process for

obtaining a product, each Party shall, in any infringement

proceeding, place on the defendant the burden of establishing

that the allegedly infringing product was made by a process other

than the patented process in one of the following situations:

(a) the product obtained by the patented process is new; or

(b) a substantial likelihood exists that the allegedly

infringing product was made by the process and the

patent owner has been unable through reasonable efforts

to determine the process actually used.

In the gathering and evaluation of evidence, the legitimate

interests of the defendant in protecting its trade secrets shall

be taken into account.

12. Each Party shall provide a term of protection for patents of

at least 20 years from the date of filing or 17 years from the

date of grant. A Party may extend the term of patent protection,

in appropriate cases, to compensate for delays caused by

regulatory approval processes.

Article 1710: Layout Designs of Semiconductor Integrated

Circuits

1. Each Party shall protect layout designs (topographies) of

integrated circuits ("layout designs") in accordance with

Articles 2 through 7, 12 and 16(3), other than Article 6(3), of

the Treaty on Intellectual Property in Respect of Integrated

Circuits as opened for signature on 26 May 1989.

2. Subject to paragraph 3, each Party shall make it unlawful

for any person without the right holder's authorization to

import, sell or otherwise distribute for commercial purposes any

of the following:

(a) a protected layout design;

(b) an integrated circuit in which a protected layout

design is incorporated; or

(c) an article incorporating such an integrated circuit,

only insofar as it continues to contain an unlawfully

reproduced layout design.

3. No Party may make unlawful any of the acts referred to in

paragraph 2 performed in respect of an integrated circuit that

incorporates an unlawfully reproduced layout design or any

article that incorporates such an integrated circuit where the

person performing those acts or ordering those acts to be done

did not know and had no reasonable ground to know, when it

acquired the integrated circuit or article incorporating such an

integrated circuit, that it incorporated an unlawfully reproduced

layout design.

4. Each Party shall provide that, after the person referred to

in paragraph 3 has received sufficient notice that the layout

design was unlawfully reproduced, such person may perform any of

the acts with respect to the stock on hand or ordered before such

notice, but shall be liable to pay the right holder for doing so

an amount equivalent to a reasonable royalty such as would be

payable under a freely negotiated license in respect of such a

layout design.

5. No Party may permit the compulsory licensing of layout

designs of integrated circuits.

6. Any Party that requires registration as a condition for

protection of a layout design shall provide that the term of

protection shall not end before the expiration of a period of 10

years counted from the date of:

(a) filing of the application for registration; or

(b) the first commercial exploitation of the layout design,

wherever in the world it occurs.

7. Where a Party does not require registration as a condition

for protection of a layout design, the Party shall provide a term

of protection of not less than 10 years from the date of the

first commercial exploitation of the layout design, wherever in

the world it occurs.

8. Notwithstanding paragraphs 6 and 7, a Party may provide that

the protection shall lapse 15 years after the creation of the

layout design.

9. This Article shall apply, except as provided in Annex

1710.9.

Article 1711: Trade Secrets

1. Each Party shall provide the legal means for any person to

prevent trade secrets from being disclosed to, acquired by, or

used by others without the consent of the person lawfully in

control of the information in a manner contrary to honest

commercial practices, in so far as:

(a) the 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 that normally deal with the kind

of information in question;

(b) the information has actual or potential commercial

value because it is secret; and

(c) the person lawfully in control of the information has

taken reasonable steps under the circumstances to keep

it secret.

2. A Party may require that to qualify for protection a trade

secret must be evidenced in documents, electronic or magnetic

means, optical discs, microfilms, films or other similar

instruments.

3. No Party may limit the duration of protection for trade

secrets, so long as the conditions in paragraph 1 exist.

4. No Party may discourage or impede the voluntary licensing of

trade secrets by imposing excessive or discriminatory conditions

on such licenses, or conditions that dilute the value of the

trade secrets.

5. If a Party requires, as a condition for approving the

marketing of pharmaceutical or agricultural chemical products

that utilize new chemical entities, the submission of undisclosed

test or other data necessary to determine whether the use of such

products is safe and effective, the Party shall protect against

disclosure of the data of persons making such submissions, where

the origination of such data involves considerable effort, except

where the disclosure is necessary to protect the public or unless

steps are taken to ensure that the data is protected against

unfair commercial use.

6. Each Party shall provide that for data subject to paragraph

5 that are submitted to the Party after the date of entry into

force of this Agreement, no person other than the person that

submitted them may, without the latter's permission, rely on such

data in support of an application for product approval during a

reasonable period of time after their submission. For this

purpose, a reasonable period shall normally mean not less than

five years from the date on which the Party granted approval to

the person that produced the data for approval to market its

product, taking account of the nature of the data and the

person's efforts and expenditures in producing them. Subject to

this provision, there shall be no limitation on any Party to

implement abbreviated approval procedures for such products on

the basis of bioequivalence and bioavailability studies.

7. Where a Party relies upon a marketing approval granted by

another Party, the reasonable period of exclusive use of the data

submitted in connection with obtaining the approval relied upon

shall commence with the date of the first marketing approval

relied upon.

Article 1712: Geographical Indications

1. Each Party shall provide, in respect of geographical

indications, the legal means for interested persons 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 territory, region or locality

other than the true place of origin, in a manner that

misleads the public as to the geographical origin of

the good;

(b) any use that constitutes an act of unfair competition

within the meaning of Article 10bis of the Paris

Convention.

2. Each Party shall, on its own initiative if its domestic law

so permits or at the request of an interested person, refuse to

register, or invalidate the registration of, a trademark

containing or consisting of a geographical indication with

respect to goods that do not originate in the indicated

territory, region or locality, if use of the indication in the

trademark for such goods is of such a nature as to mislead the

public as to the geographical origin of the good.

3. Each Party shall also apply paragraphs 1 and 2 to a

geographical indication that, although correctly indicating the

territory, region or locality in which the goods originate,

falsely represents to the public that the goods originate in

another territory, region or locality.

4. Nothing in this Article shall require a Party to prevent

continued and similar use of a particular geographical indication

of another Party 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 that Party's territory, either:

(a) for at least 10 years, or

(b) in good faith, before the date of signature of this

Agreement.

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 Party, or

(b) before the geographical indication is protected in its

Party of origin,

no Party may adopt any measure to implement this Article that

prejudices 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. No Party shall be required to apply this Article to a

geographical indication if it is identical to the customary term

in common language in that Party's territory for the goods or

services to which the indication applies.

7. A Party may provide that any request made under this Article

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 Party or

after the date of registration of the trademark in that Party,

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 Party, provided that the

geographical indication is not used or registered in bad faith.

8. No Party shall adopt any measure implementing this Article

that would prejudice any person's right to use, in the course of

trade, its name or the name of its predecessor in business,

except where such name forms all or part of a valid trademark in

existence before the geographical indication became protected and

with which there is a likelihood of confusion, or such name is

used in such a manner as to mislead the public.

9. Nothing in this Chapter shall require a Party to protect a

geographical indication that is not protected, or has fallen into

disuse, in the Party of origin.

Article 1713: Industrial Designs

1. Each Party shall provide for the protection of independently

created industrial designs that are new or original. A Party may

provide that:

(a) designs are not new or original if they do not

significantly differ from known designs or combinations

of known design features; and

(b) such protection shall not extend to designs dictated

essentially by technical or functional considerations.

2. Each Party shall ensure that the requirements for securing

protection for textile designs, in particular in regard to any

cost, examination or publication, do not unreasonably impair a

person's opportunity to seek and obtain such protection. A Party

may comply with this obligation through industrial design law or

copyright law.

3. Each Party shall provide the owner of a protected industrial

design the right to prevent other persons not having the owner's

consent from making or selling articles bearing or embodying a

design that is a copy, or substantially a copy, of the protected

design, when such acts are undertaken for commercial purposes.

4. A Party 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

into account the legitimate interests of other persons.

5. Each Party shall provide a term of protection for industrial

designs of at least 10 years.

Article 1714: Enforcement of Intellectual Property Rights:

General Provisions

1. Each Party shall ensure that enforcement procedures, as

specified in this Article and Articles 1715 through 1718, are

available under its domestic law so as to permit effective action

to be taken against any act of infringement of intellectual

property rights covered by this Chapter, including expeditious

remedies to prevent infringements and remedies to deter further

infringements. Such enforcement procedures shall be applied so

as to avoid the creation of barriers to legitimate trade and to

provide for safeguards against abuse of the procedures.

2. Each Party shall ensure that its procedures for the

enforcement of intellectual property rights are fair and

equitable, are not unnecessarily complicated or costly, and do

not entail unreasonable time-limits or unwarranted delays.

3. Each Party shall provide that decisions on the merits of a

case in judicial and administrative enforcement proceedings

shall:

(a) preferably be in writing and preferably state the

reasons on which the decisions are based;

(b) be made available at least to the parties in a

proceeding without undue delay; and

(c) be based only on evidence in respect of which such

parties were offered the opportunity to be heard.

4. Each Party shall ensure that parties in a proceeding have an

opportunity to have final administrative decisions reviewed by a

judicial authority of that Party and, subject to jurisdictional

provisions in its domestic laws concerning the importance of a

case, to have reviewed at least the legal aspects of initial

judicial decisions on the merits of a case. Notwithstanding the

above, no Party shall be required to provide for judicial review

of acquittals in criminal cases.

5. Nothing in this Article and in Articles 1715 through 1718

shall require a Party to establish a judicial system for the

enforcement of intellectual property rights distinct from that

Party's system for the enforcement of laws in general.

6. For the purposes of Articles 1715 through 1718, the term

"right holder" includes federations and associations having legal

standing to assert such rights.

Article 1715: Specific Procedural and Remedial Aspects of Civil

and Administrative Procedures

1. Each Party shall make available to right holders civil

judicial procedures for the enforcement of any intellectual

property right covered by this Chapter. Each Party shall provide

that:

(a) defendants have the right to written notice that is

timely and contains sufficient detail, including the

basis of the claims;

(b) parties in a proceeding are allowed to be represented

by independent legal counsel;

(c) the procedures do not include imposition of overly

burdensome requirements concerning mandatory personal

appearances;

(d) all parties in a proceeding are duly entitled to

substantiate their claims and to present relevant

evidence; and

(e) the procedures include a means to identify and protect

confidential information.

2. Each Party shall provide that its judicial authorities shall

have the authority:

(a) where a party in a proceeding has presented reasonably

available evidence sufficient to support its claims and

has specified evidence relevant to the substantiation

of its claims that is within the control of the

opposing party, to order the opposing party to produce

such evidence, subject in appropriate cases to

conditions that ensure the protection of confidential

information;

(b) where a party in a proceeding voluntarily and without

good reason refuses access to, or otherwise does not

provide relevant evidence under that party's control

within a reasonable period, or significantly impedes a

proceeding relating to an enforcement action, to make

preliminary and final determinations, affirmative or

negative, on the basis of the evidence presented,

including the complaint or the allegation presented by

the party adversely affected by the denial of access to

evidence, subject to providing the parties an

opportunity to be heard on the allegations or evidence;

(c) to order a party in a proceeding to desist from an

infringement, including to prevent the date of entry

into the channels of commerce in their jurisdiction of

imported goods that involve the infringement of an

intellectual property right, which order shall be

enforceable at least immediately after customs

clearance of such goods;

(d) to order the infringer of an intellectual property

right to pay the right holder damages adequate to

compensate for the injury the right holder has suffered

because of the infringement where the infringer knew or

had reasonable grounds to know that it was engaged in

an infringing activity;

(e) to order an infringer of an intellectual property right

to pay the right holder's expenses, which may include

appropriate attorney's fees; and

(f) to order a party in a proceeding at whose request

measures were taken and who has abused enforcement

procedures to provide adequate compensation to any

party wrongfully enjoined or restrained in the

proceeding for the injury suffered because of such

abuse and to pay that party's expenses, which may

include appropriate attorney's fees.

3. With respect to the authority referred to in subparagraph

2(c), no Party shall be obliged to provide such authority in

respect of protected subject matter that is acquired or ordered

by a person before that person knew or had reasonable grounds to

know that dealing in that subject matter would entail the

infringement of an intellectual property right.

4. With respect to the authority referred to in subparagraph

2(d), a Party may, at least with respect to copyrighted works and

sound recordings, authorize the judicial authorities to order

recovery of profits or payment of pre-established damages, or

both, even where the infringer did not know or had no reasonable

grounds to know that it was engaged in an infringing activity.

5. Each Party shall provide that, in order to create an

effective deterrent to infringement, its judicial authorities

shall have the authority to order that:

(a) 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

injury caused to the right holder, or, unless this

would be contrary to existing constitutional

requirements, destroyed; and

(b) 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 whether to issue such an order, judicial

authorities shall take into account the need for proportionality

between the seriousness of the infringement and the remedies

ordered as well as the interests of other persons. In regard to

counterfeit 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.

6. In respect of the administration of any law pertaining to

the protection or enforcement of intellectual property rights,

each Party 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.

7. Notwithstanding the other provisions of Articles 1714

through 1718, where a Party is sued with respect to an

infringement of an intellectual property right as a result of its

use of that right or use on its behalf, that Party may limit the

remedies available against it to the payment to the right holder

of adequate remuneration in the circumstances of each case,

taking into account the economic value of the use.

8. Each Party shall provide that, where a 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 out in this Article.

Article 1716: Provisional Measures

1. Each Party shall provide that its judicial authorities shall

have the authority to order prompt and effective provisional

measures:

(a) to prevent an infringement of any intellectual property

right, and in particular to prevent the date of entry

into the channels of commerce in their jurisdiction of

allegedly infringing goods, including measures to

prevent the entry of imported goods at least

immediately after customs clearance; and

(b) to preserve relevant evidence in regard to the alleged

infringement.

2. Each Party shall provide that its judicial authorities shall

have the authority to require any applicant for provisional

measures to provide to the judicial authorities any evidence

reasonably available to that applicant that the judicial

authorities consider necessary to enable them to determine with a

sufficient degree of certainty whether:

(a) the applicant is the right holder;

(b) the applicant's right is being infringed or such

infringement is imminent; and

(c) any delay in the issuance of such measures is likely to

cause irreparable harm to the right holder, or there is

a demonstrable risk of evidence being destroyed.

Each Party shall provide that its judicial authorities shall have

the authority to require the applicant to provide a security or

equivalent assurance sufficient to protect the interests of the

defendant and to prevent abuse.

3. Each Party shall provide that its competent authorities

shall have the authority to require an applicant for provisional

measures to provide other information necessary for the

identification of the relevant goods by the authority that will

execute the provisional measures.

4. Each Party shall provide that its judicial authorities shall

have the authority to order provisional measures on an ex parte

basis, 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.

5. Each Party shall provide that where provisional measures are

adopted by that Party's judicial authorities on an ex parte

basis:

(a) a person affected shall be given notice of those

measures without delay but in any event no later than

immediately after the execution of the measures;

(b) a defendant shall, upon request, have those measures

reviewed by that Party's judicial authorities, for the

purpose of deciding, within a reasonable period after

notice of those measures is given, whether the measures

shall be modified, revoked or confirmed, and shall be

given an opportunity to be heard in the review

proceedings.

6. Without prejudice to paragraph 5, each Party shall provide

that, upon the request of the defendant, the Party's judicial

authorities shall revoke or otherwise cease to apply the

provisional measures taken on the basis of paragraphs 1 and 4 if

proceedings leading to a decision on the merits are not

initiated:

(a) within a reasonable period as determined by the

judicial authority ordering the measures where the

Party's domestic law so permits; or

(b) in the absence of such a determination, within a period

of no more than 20 working days or 31 calendar days,

whichever is longer.

7. Each Party shall provide that, where the provisional

measures are revoked or where they lapse due to any act or

omission by the applicant, or where the judicial authorities

subsequently find 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, on

request of the defendant, to provide the defendant appropriate

compensation for any injury caused by these measures.

8. Each Party shall provide that, where a provisional measure

can be ordered as a result of administrative procedures, such

procedures shall conform to principles equivalent in substance to

those set out in this Article.

Article 1717: Criminal Procedures and Penalties

1. Each Party shall provide criminal procedures and penalties

to be applied at least in cases of willful trademark

counterfeiting or copyright piracy on a commercial scale. Each

Party shall provide that penalties available include imprisonment

or monetary fines, or both, sufficient to provide a deterrent,

consistent with the level of penalties applied for crimes of a

corresponding gravity.

2. Each Party shall provide that, in appropriate cases, its

judicial authorities may order the seizure, forfeiture and

destruction of infringing goods and of any materials and

implements the predominant use of which has been in the

commission of the offense.

3. A Party may provide criminal procedures and penalties to be

applied in cases of infringement of intellectual property rights,

other than those in paragraph 1, where they are committed

wilfully and on a commercial scale.

Article 1718: Enforcement of Intellectual Property Rights at the

Border

1. Each Party shall, in conformity with this Article, adopt

procedures to enable a right holder, who has valid grounds for

suspecting that the importation of counterfeit trademark goods or

pirated copyright goods may take place, to lodge an application

in writing with its competent authorities, whether administrative

or judicial, for the suspension by the customs administration of

the release of such goods into free circulation. No Party shall

be obligated to apply such procedures to goods in transit. A

Party may permit such an application to be made in respect of

goods that involve other infringements of intellectual property

rights, provided that the requirements of this Article are met.

A Party may also provide for corresponding procedures concerning

the suspension by the customs administration of the release of

infringing goods destined for exportation from its territory.

2. Each Party shall require any applicant who initiates

procedures under paragraph 1 to provide adequate evidence:

(a) to satisfy that Party's competent authorities that,

under the domestic laws of the country of importation,

there is prima facie an infringement of its

intellectual property right; and

(b) to supply a sufficiently detailed description of the

goods to make them readily recognizable by the customs

administration.

The competent authorities shall inform the applicant within a

reasonable period whether they have accepted the application and,

if so, the period for which the customs administration will take

action.

3. Each Party shall provide that its competent authorities

shall have the authority to require an applicant under paragraph

1 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.

4. Each Party shall provide that, where pursuant to an

application under procedures adopted pursuant to this Article,

its customs administration suspends the release of goods

involving industrial designs, patents, integrated circuits or

trade secrets into free circulation on the basis of a decision

other than by a judicial or other independent authority, and the

period provided for in paragraphs 6 through 8 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

against 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 its right of action within a reasonable

period of time.

5. Each Party shall provide that its customs administration

shall promptly notify the importer and the applicant when the

customs administration suspends the release of goods pursuant to

paragraph 1.

6. Each Party shall provide that its customs administration

shall release goods from suspension if within a period not

exceeding ten working days after the applicant under paragraph 1

has been served notice of the suspension:

(a) the customs administration has not been informed that a

party other than the defendant has initiated

proceedings leading to a decision on the merits of the

case, or

(b) a competent authority has taken provisional measures

prolonging the suspension,

provided that all other conditions for importation or exportation

have been met. Each Party shall provide that, in appropriate

cases, the customs administration may extend the suspension by

another 10 working days.

7. Each Party shall provide that 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 on request of the

defendant with a view to deciding, within a reasonable period,

whether the measures shall be modified, revoked or confirmed.

8. Notwithstanding paragraphs 6 and 7, where the suspension of

the release of goods is carried out or continued in accordance

with a provisional judicial measure, the provisions of Article

1716(6) shall apply.

9. Each Party shall provide that its competent authorities

shall have the authority to order the applicant under paragraph 1

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 paragraph 6.

10. Without prejudice to the protection of confidential

information, each Party shall provide that its competent

authorities shall have the authority to give the right holder

sufficient opportunity to have any goods detained by the customs

administration inspected in order to substantiate its claims.

Each Party shall also provide that its competent authorities have

the authority to give the importer an equivalent opportunity to

have any such goods inspected. Where the competent authorities

have made a positive determination on the merits of a case, a

Party 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.

11. Where a Party requires its 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 by the Party's competent

authorities, and where the importer lodges an appeal

against the suspension with competent authorities, the

suspension shall be subject to the conditions, with

such modifications as are necessary, set out in

paragraphs 6 through 8; and

(c) the Party shall only exempt both public authorities and

officials from liability to appropriate remedial

measures where actions are taken or intended in good

faith.

12. Without prejudice to other rights of action open to the

right holder and subject to the defendant's right to seek

judicial review, each Party shall provide that its competent

authorities shall have the authority to order the destruction or

disposal of infringing goods in accordance with the principles

set out in Article 1715(5). In regard to counterfeit 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.

13. A Party may exclude from the application of paragraphs 1

through 12 small quantities of goods of a non-commercial nature

contained in travellers' personal luggage or sent in small

consignments that are not repetitive.

14. This Article shall apply, except as provided in Annex

1718.14.

Article 1719: Cooperation and Technical Assistance

1. The Parties shall provide each other on mutually agreed

terms with technical assistance and shall promote cooperation

between their competent authorities. Such cooperation shall

include, but not be limited to, the training of personnel.

2. The Parties shall cooperate with a view to eliminating trade

in goods that infringe intellectual property rights. For this

purpose, each Party shall establish and notify the other Parties

of contact points in its federal government and shall exchange

information concerning trade in infringing goods.

Article 1720: Protection of Existing Subject Matter

1. Other than the provisions of Article 1705(7), this Agreement

does not give rise to obligations in respect of acts that

occurred before the date of application of the relevant

provisions of this Agreement for the Party in question.

2. Except as otherwise provided for in this Agreement, each

Party shall apply this Agreement to all subject matter existing

on the date of application of the relevant provisions of this

Agreement for the Party in question, and which is protected in a

Party on the said date, or which meets or comes subsequently to

meet the criteria for protection under the terms of this Chapter.

In respect of this paragraph and paragraphs 3 and 4, a Party's

obligations with respect to existing works shall be solely

determined under Article 18 of the Berne Convention and with

respect to the rights of producers of sound recordings in

existing sound recordings shall be determined solely under

Article 18 of that Convention, as made applicable under this

Agreement.

3. Except as required under Article 1705(7), and

notwithstanding paragraph 2, a Party shall not be required to

restore protection to subject matter that, on the date of

application of the relevant provisions of this Agreement for the

Party in question, has fallen into the public domain in its

territory.

4. 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 ratification of this Agreement by that

Party, any Party 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

Party. In such cases, the Party shall, however, at least provide

for payment of equitable remuneration.

5. No Party shall be obliged to apply the provisions of Article

1705(2)(d) or Article 1706(1)(d) with respect to originals or

copies purchased prior to the date of application of the relevant

provisions of this Agreement for that Party.

6. No Party shall be required to apply Article 1709(10), or the

requirement in Article 1709(7) 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 text of the Draft Final Act Embodying the Results of the

Uruguay Round of Multilateral Trade Negotiations became known.

7. In the case of intellectual property rights for which

protection is conditional upon registration, applications for

protection that are pending on the date of application of the

relevant provisions of this Agreement for the Party 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.

Article 1721: Definitions

For purposes of this Agreement:

confidential information includes trade secrets, privileged

information and other materials exempted from disclosure under

the Party's domestic law;

encrypted program-carrying satellite signal means a

program-carrying satellite signal that is transmitted in a form

whereby the aural or visual characteristics, or both, are

modified or altered for the purpose of preventing the

unauthorized reception by persons without the authorized

equipment that is designed to eliminate the effects of such

modification or alteration, of a program carried in that signal;

geographical indication means any indication that identifies a

good as originating in the territory of a Party, or a region or

locality in that territory, where a particular quality,

reputation or other characteristic of the good is essentially

attributable to its geographical origin;

in a manner contrary to honest commercial practices means at

least practices such as breach of contract, breach of confidence

and inducement to breach, and includes the acquisition of

undisclosed information by other persons who knew, or were

grossly negligent in failing to know, that such practices were

involved in the acquisition;

intellectual property rights refers to copyright and related

rights, trademark rights, patent rights, rights in layout designs

of semiconductor integrated circuits, trade secret rights, plant

breeders' rights, rights in geographical indications and

industrial design rights;

nationals of another Party means, in respect of the relevant

intellectual property right, persons who would meet the criteria

for eligibility for protection provided for in the Paris

Convention (1967), the Berne Convention (1971), the Geneva

Convention (1971), the International Convention for the

Protection of Performers, Producers of Phonograms and

Broadcasting Organizations (1961), the UPOV Convention (1978),

the UPOV Convention (1991) or the Treaty on Intellectual Property

in Respect of Integrated Circuits, as if each Party were a party

to those Conventions, and with respect to intellectual property

rights that are not the subject of these Conventions, "nationals

of another Party" shall be understood to be at least individuals

who are citizens or permanent residents of that Party and also

includes any other natural person referred to in Annex 201.1;

public includes, with respect to rights of communication and

performance of works provided for under Articles 11, 11bis(1) and

14(1)(ii) of the Berne Convention, with respect to dramatic,

dramatico-musical, musical and cinematographic works, at least,

any aggregation of individuals intended to be the object of, and

capable of perceiving, communications or performances of works,

regardless of whether they can do so at the same or different

times or in the same or different places, provided that such an

aggregation is larger than a family and its immediate circle of

acquaintances or is not a group comprising a limited number of

individuals having similarly close ties that has not been formed

for the principal purpose of receiving such performances and

communications of works; and

secondary uses of sound recordings means the use directly for

broadcasting or for any other public communication of a sound

recording.

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ANNEX 1701.3

Intellectual Property Conventions

1. Mexico shall:

(a) make every effort to comply with the substantive

provisions of the 1978 or 1991 UPOV Convention as soon

as possible and shall do so no later than two years

after the date of signature of this Agreement; and

(b) accept from the date of entry into force of this

Agreement, applications from plant breeders for

varieties in all plant genera and species and grant

protection, in accordance with such substantive

provisions, promptly after complying with subparagraph

(a).

2. Notwithstanding Article 1701(2)(b), this Agreement confers

no rights and imposes no obligations on the United States with

respect to Article 6bis of the Berne Convention, or the rights

derived from that Article.

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ANNEX 1705.7

Copyright

The United States shall provide protection to motion

pictures produced in another Party's territory that have been

declared to be in the public domain pursuant to 17 U.S.C. section

405. This obligation shall apply to the extent that it is

consistent with the Constitution of the United States, and is

subject to budgetary considerations.

=============================================================================

ANNEX 1710.9

Layout Designs

Mexico shall make every effort to implement the requirements

of Article 1710 as soon as possible, and shall do so no later

than four years after the date of entry into force of this

Agreement.

=============================================================================

ANNEX 1718.14

Enforcement of Intellectual Property Rights

Mexico shall make every effort to comply with the

requirements of Article 1718 as soon as possible, and shall do so

in any event no later than three years after the date of

signature of this Agreement.