Complete Home & Office Legal Guide/Complete Home and Office Legal Guide (Chestnut) (1993).ISO/stat/nafta/17int_a.asc

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                                 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.