RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/265/Add.2
18 July 2001
(01-3568)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  French
REVIEW OF LEGISLATION
Replies by Morocco to the Questions Posed by Switzerland
Addendum
By means of a communication from the Perm anent Mission of Morocco, dated 16 June 2001,
the Secretariat has received the following replies to the questions posed by Switzerland,  which were
circulated in document IP/C/W/263.
–––––––––––––––
A. GEOGRAPHICAL INDICATIONS
1. Please explain in detail how your legislation provides protection for geographical
indications.
Law 17/97 on the protection of i ndustrial property provides fo r the protection of geographical
indications by including geogra phical indications among the areas encompassed by the scope and
purpose of the law, in particular Article 1.
That law deals with the protection of geographi cal indications according to the nature thereof,
and specifically with regard to indications  of source and appellations of origin.
Accordingly, Article 180 of Law 17/97 deals with indications of source and provides as follows:
"The term ‘indication of source’ is defined as an expression or mark used to indicate that a product or
service comes from a country or group of countries, or a region or specific place."
Moreover, Article 182 qualifies as unlawful:
- The direct or indirect use of a false or misleading indication concerning the source of
a product or service or the identity of the producer, manufacturer or trader;
- the direct or indirect use of a false or misleading designation of origin or the imitation
of a design of origin, even if the true origin of the product is indicated or thedesignation is used in translation or a ccompanied by expressions such as "kind",
"style", "imitation" or the like.
Similarly, Article 183 of the law provides as follows:  "Criminal proceedings intended as a
deterrent to the commission of the unlawful acts re ferred to in Article 182 may be instituted by the
Office of the Public Prosecutor.  A claim for da mages may also be brought by any injured party,IP/C/W/265/Add.2
Page 2
whether a natural or juristic person, association or labour union, and in particular by any producers,
manufacturers or traders that may properly use the pa rticular indication or designation of origin in
question to identify their products or services, or by associations acting in representation of the same for
that purpose, without prejudice to th e right of recourse to civil acti on or of petitioning for precautionary
measures."
With respect to penalties, Article 231 of the law provides:  "The unlawful acts referred to in
Article 182 hereinabove shall be subject to the crim inal penalties laid down in Article 226 hereinabove,
without prejudice to any penalties establ ished pursuant to special legislation."
Thus, Article 231 provides that the unlawful acts refe rred to in Article 182 shall be liable to the
criminal penalties laid down in Article 226 in rega rd to marks.  Specifically, Article 226 provides as
follows:
"The following shall be liable to a penalty of im prisonment for one to si x months, and/or a fine
of 25, 000 to 250, 000 dirhams:
(1) Those who, without counterfeiting a registered mark, have made a fraudulent
imitation thereof likely to mislead the buyer or have made use of a fraudulently
imitated mark;
(2) those who have made use of a registered mark bearing indications likely to mislead
the buyer as to the nature, material properties, composition or active-principle
content, type or origin of the object or product described;
(3) those who, without lawful cause, have stocked products which they knew to bear a
fraudulently imitated mark or have knowingly sold, put on sale or offered to supplyproducts or services under such a mark."
In addition, as a deterrent to fraud,  the protecti on of geographical indications is assured through
the application of the provisions of Article 4 of La w 13-83 of 5 October 1984, which establishes that any
deception with respect to the origin of goods cons titutes criminal fraud.  Anyone committing this crime
is liable to the penalties laid down in Article 1 of that law, including, inter alia,  imprisonment for a
period of six months to five years and/ or a fine of 1, 200 to 24, 000 dirhams.
B. P
ATENTS
2. Does your legislation grant patent protection to all categories of products or are there
any exceptions?  If so, please explain in detail what kind of exceptions exist and how they
comply with Article 27 of the TRIPS Agreement.
Article 22 of Law 17/97 deals with the criteria for the patentability of an invention, and
establishes:  "Any new invention that involves an in ventive step and is capable of industrial application
may be patented."
In this connection, Article 21 provides as follows:
"The invention may relate to products, to proce sses or to any new application or combination of
known methods, for the purpose of attaining a result not previously attainable by state-of-the-art
means.
The invention may also pertain to pharmaceu tical compositions, pharmaceutical products or
remedies of any kind, including procedures and devices used in the preparation thereof."IP/C/W/265/Add.2
Page 3
Exceptions are covered by Articles 23, 24 a nd 25 of Law 17/97, in the following terms:
"Article 23:  The following are not  considered to be inventions in the sense of Article 22 above:
(1) Discoveries, scientific theories, or mathematical methods;
(2) aesthetic creations;(3) schemes, rules or methods for performing me ntal acts or playing games, or pertaining
to economic activities, or to computer programs;
(4) presentations of information.
Under the provisions of the present Article, th e listed subject-matter is deemed unpatentable
only to the extent to which a patent application or  patent relates to such subject-matter as such.
Article 24:  The following shall not be patentable:
(a) Inventions the publication or application of which would be contrary to ordre public
or morality;
(b) new plant varieties, which are subject to the provisions of Law 9/94 respecting the
protection of new plant varieties.
Article 25:  Surgical or therapeutic methods of  treatment for the human body or animals shall
not be considered inventions capable of industria l application pursuant to Article 22 above.  The
present provision shall not apply to products, a nd particularly substances or compositions, that
are used to put such a surgical or th erapeutic treatment method into practice."
Computer programs are protect ed by Law 2/00 on copyright and neighbouring rights, and new
plant varieties are protected by Law 9/94.
Thus, Law 17/97 is consistent with the provis ions of Article 27 of the TRIPS Agreement.
Moreover, Law 9/94 on the protec tion of new plant varieties was drawn up on the basis of the
1991 UPOV Convention.  This means that it meet s the requirements of Article 27 of the TRIPS
Agreement, which stipulates that new plant varieties must be protected by patents or by an effective  sui
generis  system or by a combination thereof.  Protection based on the 1991 UPOV Convention is
considered to be an effective sui generis  system.
3. Does your legislation, in accordance with Article 27.1 in combination with Article 31 of
the TRIPS Agreement, consider importation as "working" a patent (and therefore preclude
compulsory licensing, if a product is being imported)?
Pursuant to Articles 16 and 51 of Law 17/97, the holder of a patent enjoys a temporary
exclusive right to exploit the patent.  That exclusive right includes the right to prevent any other
unauthorized person from exploiting the patent, pursuant to Articles 53 and 54 and Chapters 1 and 11
of Title VIII.
Article 53 provides as follows:The following shall be prohibited, save consent by the patent owner:IP/C/W/265/Add.2
Page 4
(a) Making, offering, putting on the market or using a product which is the subject-matter
of the patent, or importing  or stocking a product for such purposes;
(b) Using a process which is the subject-matter of the patent or – if the third party
involved is aware that or if the circumstances make it clear that the use of the process
is prohibited without the consent of the owner of the patent – offering to use such
process within Moroccan territory;
(c) offering, putting on the market or using the product obtained directly by a process
which is the subject-matter of the patent or importing , or stocking a product for such
purposes.
"It is also prohibited, without the consent of the owner of the patent, to supply or offer to supply
within Moroccan territory, to an y person other than the person authorized to exploit the patented
invention, the means for putting such  invention to use within that  territory with respect to an
essential element of the invention, if the third pa rty involved is aware, or if the circumstances
make it clear, that such means are suitable and intended for putting that invention to use.
The provisions of the foregoing paragraph shall not apply if the means for putting the invention
to use are products that are commercially available on a regular basis, unless the third party
incites the person to whom he delivers such m eans to commit the acts prohibited by Article  53
above.
Persons who engage in the activities referred to in Article 55 below are not considered to be
persons authorized to exploit the invention in the sense of the first paragraph above."
However, the exclusive right conferred by the patent pursuant to the provisions of
Article 55(d) does not extend to acts concerning the product covered by the patent, carried out within
Moroccan territory, after the product has been made commercially available in Morocco by the owner
of the patent or with such owner’s express consent.
Articles 60 to 66 lay down the terms, conditions and procedures applicable to the granting of
compulsory licences.
With respect to new plant varieties, Article 16, paragraph 4, of Law 9/94 stipulates that the
authorization of the breeder is required for the fo llowing activities in regard to material for the
reproduction or propagation of the variety protected:
- Production or reproduction;
- conditioning for the purpose of propagation;- offering for sale;- selling or other marketing;- exporting;
- importing;
- stocking for any of the purposes mentioned above.IP/C/W/265/Add.2
Page 5
4. Does your legislation make the granting of  a compulsory licence subject to all the
conditions enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant
provisions of law.
Compulsory licences are governed by the provisions of Articles 60 to 66 of Law 7/97, which
are transcribed below:
"Article 60:  Any person under public or private law may, three years after the issuance of the
patent or four years after the date of filing th e application for a patent, obtain from the court a
compulsory licence in respect of that patent, in accordance with Articles  61 and 62 below, if at
the time of the request and in the absence of leg itimate excuses, the owner of the patent or his
successor in title:
(a) Has not begun to exploit, or has not made effective and serious preparations to
exploit, the invention covered by the patent within the territory of the Kingdom of
Morocco;
(b) has not marketed the subject-matter of the patent in a quantity sufficient to meet the
needs of the Moroccan market;  or
(c) has abandoned the exploitation or marketing of the patent in Morocco more than three
years previously.
Article 61:  An application for a compulsory licen ce must be filed with the court.  It must be
accompanied by a justification stating that the applicant has been unable to obtain an
exploitation licence from the owner of the patent on an amicable basis, and in particular on
reasonable commercial terms and conditions, and that the applicant is in a position to exploit theinvention in such a way as to meet  the needs of the Moroccan market.
Article 62:  A compulsory licence cannot be an exclusive licence.A compulsory licence must be issued mainly fo r the purpose of supplying the Moroccan market.
A compulsory licence is granted pursuant to condi tions established by the court.  It must be
accompanied by a justification stating that the applicant has been unable to obtain an
exploitation licence from the owner of the patent on an amicable basis, and in particular on
reasonable commercial terms and conditions, and that the applicant is in a position to exploit the
invention in such a way as to meet the need s of the Moroccan market.  The court may amend
these conditions at the request of the owner or the licensee.
Article 63:  If the circumstances that led to th e granting of the compulsory licence cease to exist
and it appears unlikely that they will arise again, the exploitation licence may be withdrawn
provided that the legitimate interests of the li censees are adequately protected.  Upon motivated
request of any party having an interest in th e matter, the court may review the continued
existence of these circumstances.  If the owner of a compulsory licence fails to abide by the
conditions pursuant to which the licence was grante d, the owner of the patent and, if applicable,
the other licensees may have the court withdraw th e licence.  Any transfer of the rights attached
to a compulsory licence shall be submitted to the court for its approval, on pain of nullity.
Article 64:  Once judicial decisions taken pursuan t to the present subsection become final, the
clerk’s office shall give notice thereof to the ag ency responsible for industrial property matters,
which shall enter them in the national patent register.IP/C/W/265/Add.2
Page 6
Article 65:  In the absence of an amicable agre ement, the court may, pursuant to Articles  60 to
62 above, grant the holder of a compulsory licence a certificate of addition to the patent itself,
even if such certificate is issued before the expi ry of the time-periods referred to in Article  60
above.
Article 66:  If an invention protected by a pa tent cannot be exploited without infringing the
rights attached to an earlier patent for which the owner refuses to grant an exploitation licence
on reasonable commercial terms and conditions, the owner of the later patent may obtain a
compulsory licence from the court pursuant to the same conditions set forth in Articles  60 to 62
above, provided:
(a) The invention claimed in the later patent involves an important technical advance of
considerable economic significance in relation to the invention claimed in the earlier
patent;
(b) the owner of the earlier patent is entitled to a cross-licence on reasonable terms to use
of the invention claimed in the later patent;  and
(c) the licence in respect of the earlier patent is non-assignable except with the
assignment of the later patent."
With respect to new plant varieties, Law 9/94 provides for two types of licences:- Compulsory licences, pursuant to Articles 20, 21, 22, 23 and 24;- ex officio licences, pursuant to Articles 25, 26, 27, 28 and 29.
Any person under public or private law may, three years after the issuance of a certificate or
four years after the date of filing the application for a certificate, obtain a compulsory licence in
respect of that certificate, in accordance with Articles 22 to 24 of Law 9/94, if at the time of the
request and in the absence of legitimate excuses, the owner of the certificate or his successor in title:
- Has not begun to exploit, or has not made effective and serious preparations to
exploit, the new plant variety covered by the certificate within Moroccan territory;  or
- has not marketed the product covered by the certificate in a quantity sufficient to
meet the needs of the Moroccan market;  or
- has abandoned the exploitation or marketing of the plant variety covered by the
certificate Morocco more than three years previously.
An application for a compulsory licence must be filed with the competent court.  It must be
accompanied by a justification stating that the applicant has been unable to obtain an exploitation
licence from the holder of the certificate, and that the applicant is in a position to exploit the plant
variety in serious and effective manner.
A compulsory licence cannot be an exclusive licence.  It is granted on specific terms,
particularly as to its duration, its scope and the royalties to which it gives rise.
At the request of the holder of the certificate or the licensee, these terms may be amended by
decision of the competent court.IP/C/W/265/Add.2
Page 7
Any transfer of the rights attached to a compulsory licence shall be submitted to the
competent court for its approval, on pain of nullity.
If the owner of a compulsory licence fails to abide by the conditions pursuant to which the
licence was granted, the holder of the certificate and, if applicable, the other licensees may have thecourt withdraw the licence.
A plant variety which is indispensable to human or animal life or which is of public health
interest may be exploited ex officio by any person providing the appropriate technical and
professional guarantees.
Ex officio exploitation shall be authoriz ed pursuant to administrative approval.
As from the date of publication of the administrative act authorizing the ex officio
exploitation of a certificate with respect to a new plant variety, any person providing the appropriate
technical and professional guarantees may ask to be issued a licence, which shall be referred to as an
"ex officio licence".
An ex officio licence cannot be an exclusive licence.  The terms and conditions for requesting
and issuing such a licence are established by regulation.
An ex officio licence is granted on specific terms, particularly as to its duration and scope.The royalties to which an ex officio licence gives rise are left to the parties to agree upon
between themselves;  or in the event of failure to reach such an agreement, the amount of such
royalties is established by the competent tribunal.
If the holder of an ex officio licence fails to abide by the conditions stipulated, the licence
may be cancelled according to procedures established by regulation.
The State may, ex officio and at any time, for national defence purposes, obtain an
exploitation licence with respect to any new plant variety which is the subject of a new plant variety
certificate or an application for such a certificate, whether the exploitation of the new plant variety is
to be done by the State itself or on its behalf.
Such ex officio licences are authorized by an administrative act under conditions established
by regulation.
The said administrative act lays down the terms of the licence .The royalties to which such an ex officio licence gives rise are left to the parties to agree upon
between themselves;  or in the event of failure to reach such an agreement, the amount of such
royalties is established by the administrative tribunal of Rabat.
Such a licence takes effect as from the date of the request for an ex officio licence.
The rights attached to an ex officio licence may not be assigned or transferred.
5. Does your legislation provide for the principle of the reversal of burden of proof in a
process patent litigation?   Please cite the relevant provisions of law.
This question raises the problem of the legal pr otection for owners of patents whose rights have
not been respected owing to illegal acts committed by infringers of the law on industrial property.IP/C/W/265/Add.2
Page 8
In order to provide better safeguards for owne rs of patents in this respect, the Moroccan
legislator has adopted the pr inciple of freedom of proof.
In this connection, Article  211 of Law 17/97 on th e protection of industrial property provides as
follows:
"The holder of an application for a patent or an application for a certificate of addition to a
principal patent, may present all types of eviden ce in order to demonstrate the infringement of
which he claims to be a victim.
Moreover, he may have a bailiff or court officer, at the instruction of the president of the court
having jurisdiction in the place where the infringement is alleged to have taken place, make a
detailed description of the goods or processes a lleged to be counterfeit, with or without seizure.
The description may be carried out with  the assistance of a qualified expert.
For purposes of carrying out the same order, th e president of the court may authorize a bailiff,
assisted by a qualified expert, to carry out any st eps useful in establishing the origin, nature and
extent of the infringement.
The same right is granted to any holder of an exclusive right of exploitation pursuant to the
second paragraph of Article 202 of this Law, or pursuant to Article  210 above with respect tothe holder of a compulsory licence or an ex officio licence.
If the applicant has failed to institute proceedin gs before the court within 30 days following the
date on which the order is executed, the detailed description, with or without seizure, shall be
null and void as of right, wit hout prejudice to possible damages."
Under ordinary law, Article 55 of the Code of Civil Procedure stipulates that "before ruling on
the merits, the judge may, at the request of both or one of the parties, or ex officio, order an expert study,
an inspection of premises, an inquiry, the establis hment of the genuineness of a document or any other
investigative measure."
Similarly, Article  22 of the Comm ercial Code provides as follows:
"In the course of a judicial proceeding, the court may order, either at ex officio or at the request
of one of the parties, that the accountin g documents be excerpted or communicated."
The Commercial Code adds that "excerpting c onsists of extracting from the accounts only those
entries that concern the case before the court" (Article  23), and in the event that the respondent
endeavours to thwart this provision, the Commercial Code stipulates that "if, in response to the judge’s
order, the merchant refuses to produce his accounts, or states that he has no accounts, the judge may
consider the same as supporting the other party’s claims" (Article  25).
Similarly, the Dahir on obligations and contract s - the Moroccan Civil Code - states that "the
provision of evidence in respect of obligations need not be according to any special form other than such
as may be explicitly established by law" (Article  401).
The same Dahir enumerates the forms of evidence recognized by law as follows:IP/C/W/265/Add.2
Page 9
1. "Admission by a party;
2. written or documentary evidence;
3. oral evidence;
4. circumstantial evidence;
5. sworn testimony, and the refusal to gi ve sworn testimony" (Article  404).
The Dahir also states that where facts are to be proved, written or documentary evidence is
excluded (Article 444), and of course this is to the benefit of claimants or those whose rights have been
infringed upon.
C. PROTECTION OF UNDISCLOSED INFORMATION
6. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market
authorization of a pharmaceutical or of an agricultural chemical product is protected against
disclosure and against unfair commercial use by a competitor, for example by prohibiting a
second applicant from relying on, or from referring to the original data of the first applicant,
when applying subsequently for market authorization for his own product.  Does yourlegislation provide for exceptions to this?  If yes, under what conditions would such exceptions
apply?  Does your legislation set a specific term of protection for undisclosed test or other data
of the first applicant?
The protection of undisclosed information, particul arly in regard to procedures for obtaining
authorization from the Ministry of Public Health to market a product, is provided for in a number of
laws and regulations.
Thus, Article 18 of the General Civil Service Act and Regulations requires every official to
keep confidential everything concerning facts and information of which he becomes aware during or in
connection with the performance of his duties, irre spective of the confidentiality provisions of the
Criminal Code.
In the area of industrial property, this protec tion is granted pursuant to Articles 215 and 216 of
Law 17/97.
Article 215 provides as follows:"The penalties provided for in Articles 213 and 214 above shall be increased to imprisonment
for six months to two years and/or a fine  of 100, 000 to 500, 000 Dirhams only if the ... "
"An employee who has entered into association wi th the infringer after informing him of the
processes described in the patent shall be liab le to the same penalties.  The employee may be
prosecuted under the provisions of Article 447 of the Criminal Code."
And Article 216 provides:
"Without prejudice to the  penalties laid down in special laws, those who, in speeches or
lectures delivered in public places or at public meetings, or in documents or publications sold or
distributed, offered for sale or displayed in pub lic premises or at public meetings, have given
any information, indication or desc ription whatsoever concerning patents or patents of addition
relating to a main patent or integrated circuit layout-designs (topographies) for which anapplication has been filed by them or by othe rs but which have not yet been issued, shall be
liable to a fine of 50,000 to 500,000 dirhams.  In addition to the fine, repeat offenders shall be
liable to imprisonment for three months to two years.IP/C/W/265/Add.2
Page 10
In addition to the fine, repeat offenders shall be  liable to imprisonment for three months to two
years." [1]
With regard to new plant varieties, Article 71 of Law 9/94 stipulates that the production and
trade secrets of interested parties are to be safeguarded.  The opposing party is given access to
evidence that might reveal such secrets only insofar as consistent with their protection.
D. ENFORCEMENT
7. Please indicate remedies provided by your legislation, which constitute effective
deterrents to infringements of intellectual property rights.
The issue raised in question 7 has been discu ssed fully in the document containing Morocco’s
replies to the Checklist of Issues on Enforcement, circulated to WTO Members on 18 April 2001
(IP/N/6/MAR/1).
8. Please describe any new initiatives that are planned to improve enforcement of
intellectual property rights in your country, particularly initiatives related to criminal
enforcement.
The issue raised in question 8 has been discu ssed fully in the document containing Morocco’s
replies to the checklist of Issues on Enforcement, circulated to WTO Members on 18 April 2001(IP/N/6/MAR/1).
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1 Translator’s note:  Sic.