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.