WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACIÓN MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
InteHectual Property RigMs IPlNllfBW AmI 
13 F ebruary 2002 
(02-0737) 
Original: Englishl 
anglaisl 
inglés 
MAIN DEmCATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOl'lFIED UNDER ARTICLE 63.2 OF l'HE AGREEMENl' 
BOTSWANA 
The present document reproduces the texe ofthe following laws and regulations, as notified by Botswana 
under Article 63.2 ofthe Agreement (see document IPIN/lIBWA/l): 
Industrial Property Act, Act N° 14 of 1996 
Industrial Property (Amendment) Act, Act N° 19 of 1997 
Conseil des aspects des droits de propriété 
intelleeíueile quí íoucbent ao commerce 
PRINCIPALES LOliS El' RÉGLEMENTATIONS CONSACRÉES Á. LA 
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE VARTICLE 63:2 DE VACCORD 
BOTSWANA Page 
2 
80 
Le présent document contient le textel des 10is et réglementations ci-apres, notifiées par le Botswana au titre 
de ]'article 63:2 de l'Accord (voir le document IPlNllIBWA/l): 
Loi sur la propriété industrielle, loi nO 14 de 1996 
Loi (modification) sur la propriété industrielle, Loi n° 19 de 1997 
Conse.io de los Aspectos de los Derecbos de Propiedad 
Intelectual relacionados con el Comercio 
PRlNClP ALES LEYES y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PÁRRAFO 2 DEL 
ARTÍCULO 63 DEL ACUERDO 
BOTSWANA Page 
2 
80 
En el presente documento se reproduce el texto] de las siguientes leyes y reglan1entos que Botswana 
notificó de confonnidad con lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento 
IPlNllIBWAIl ): 
Ley de propiedad industrial, Ley N° 14 de 1996 
Ley de propiedad industrial ( modificación), Ley N° 19 de 1997 
1 In English only./En anglais seulement./En inglés solamente. 2 
80 IPINIl/BWA/I/l 
Page 2 
Republic of BOlswana 
INDUSTRIAL PROPERTY ACT, 1996 
Printed by the Government Primer, Gaborone, Botswana INDUSTRIAL PROPERTY ACT, 1996 
No. 14 
ARRANGEIv1ENT OF SECTIONS 
SECTION 
PART 1 -Preliminary 
1. Short title 
2. Interpretation 
3. Establishment of Patents, Marks and Designs Office IP/N/1/BW A/III 
Page 3 
of1996 
4. Registrar, Deputy Registrar and Assistant Registrars of Marks, Patents 
Designs 
5. Powers and functions of Registrar 
6. Seal of office 
7. Registers for patents, etc 
PART II-Patents 
8. Patentable inventions 
9. Matter excluded from patent protection 
10. Who may apply for a patent 
11. Right to patent 
12. Transfer of rights to a patent 
13. Application for a patent 
14. Amendment of application 
15. Unity of invention 
16. Division of application 
17. Joint applicants 
18. Right of priority 
19. Conversion of patent application into application for utility model certificare 
20. Informaríon conceming corresponding foreign applications for patents 
21. Filing date of application for a patent 
22. Examination of applications 
23. Grant of patent 
24. Rights conferred by patent 
25. Proceedings for infringement 
26. Restriction on recovery of damages for infringement 
27. Duration and maintenance of patent 
28. ARlPO Prolocol patents 
29. Joim ownership in patent 
30. Exploitation by Govemmem or person authorized thereby 
~ 1 . Compulsory licences 
32. Termination of contracts relating to licences 
33. Invalidaríon of patent [P/N/UBW AlIII 
Page 4 
PART lIr -Utility Model Certificates 
34. Applicability of provisions relating lO patems 
35. Qualification of invemion for utility model certificate 
36. Duration of utÍlÍty model certificare 
37. Invalidation of utility model certificate 
38. Conversion of application for utility model certificate into application for patent 
PART IV -Industrial Designs 
39. Registrable industrial designs 
40. Right lO industrial design 
41. Transfer of right to a design 
42. Application for registration of design 
43. Right of prioríty 
44. Fíling date of application 
45. Examination of applications 
46. Registration of design 
47. Rights conferred by registration 
48. Proceedings for infringemem 
49. Duration and renewal of registration of design 
50. ARIPO Protocol designs 
51. Inspection of registered design 
52. Invalidation of registration of design 
PART V -Marks. Collective Marks and Trade Names 
53. Acquisition of exclusive ríght to a mark 
54. Application for registration of a mark 
55. Examination of application for a mark 
56. Opposition to registraLion of a mark 
57. Registration of mark 
58. Rights conferred by registration of mark 
59. Transfer of rights in marks 
60. Proceedings for infringemem 
61. Duration and renewal of registration of mark 
62. Banjul Protocol on marks 
63. Invalidation of registration of mark 
64. Removal of mark on grounds of non -use 
65. Collective marks 
66. Invalidatíon of registratíon of collcctive mark 
67. Lícensing of marks and colleclive marks 
68. Trade names 
PART VI -Aces of U nfair Competition 
69. Acts of unfair compctition 
PART VII -A1iscellaneous Provisions 
70. Changes in O\vnership 
71. Licence rights 
72. Agents 
73. Correction of errors 
74. Exercise of discreüonary powers 
75. Extension of time for applications lP1N1l !BW AII/l 
Page 5 
76. Offences 
77. Appeals 
78. Regulations 
79. Repeal 
80. Savings 
81. Transitional 
First Schedule 
Second Schedule 
An Act to provide for the protection of industrial property in 
Botsvvana, and for maHers reIated thereto 
Date 01 Assent: 21.08.96. 
Date olCommencement: 27.08.96. 
ENACTED by the Parliament of Botswana. 
PART 1 -Preliminary 
1. This Act rnay be cited as the Industrial Property Act, 1996. 
2. In tms Act, unless the context othcnvise requires -
"ARIPO" means the African Regional Intellectual Property Organiza­
tion; 
"ARIPO Protecol" rneans the Protocol on Patents and Industrial Designs 
Within the Frarnework of ARIPO of 10th December 1982; 
"Banjul protocol" rneans Banjul Protocol on marks of 27th April, 1994; 
"collective rnark" rneans any visible sjgn designated as such in the appli­
cation for registration and capable of ilistinguismng the origin or 
other cornmon characteristic, incluiling the quality, of goods or 
services of ilifferent enterprises wmch use the sign subject to the 
control of the registered owner thereof; 
"convention country" means a country wruch is a party to the París Con­
vention; 
"foreign application" means any application for a patent or other title of 
protection flled by that applicant outside Botswana; 
"industrial design" rneans any composition of lines or colours or any 
three dimensional form, whether or not associated with lines or 
colours, wruch composition or form gives a special appearance to 
a product of industry or hanilicraft and can serve as a panem for a 
product of industry or handicraft provided that it does not consist 
of anytrung wruch serves to obtain a technical result and leaves no 
freedom as regards arbitrary features of appearance; 
Hintegrated circuit" means a circuit, in its final or an intermeiliate form, 
in wmch the elements, at least one of which is an active element, 
and sorne or a11 of the interconnections are integrally formed in 
or on a piece of material and that is intended te perform an 
electroruc function; 
"Intemational Classification" means, unless othenvise indicated, the 
classification accoriling to the Nice Agreement Conceming the 
Intemational Classification of Goods and Services for the Pur­
poses of the Registration of Marks, of June 15, 1957, as last 
revised; Short tille 
lnterpre­
tation IPIN/l/BWAlfIl 
Page 6 
Establish­
ment of Marks, 
Patents and 
Designs Office 
Registrar, 
Deputy 
Registrar and 
Assistant 
Registrars of 
Marks, Patents 
and Designs "Intemational Patent Oassification" means the c1assification accord­
ing to the Strasbourg Agreement of March 24, 1971; 
"invention" means an idea of an inventor which permits in practice the 
solution to a specific problem in the field of technology; 
"Joumal" means the joumal ofmarks, patents and designs referred to 
in section 5(e); 
"mark" means any visible sign capable of distinguishing the goods or 
services of an enterprise; 
"Master" means the Master of the High Court; 
"Minister" means the Minister of Commerce and Industry; 
"Paris Convention" means the Paris Convention for the Protection 
of Industrial Property of March 20, 1883, as last revised; 
"patent" means a title granted to protect an invention under this Act; 
"patentee" means the person to whom a patent has been granted 
under this Act; 
"priority date" means the date of the earlier application that serves JS 
the basis for the right of priority provided for by Aniele 4 of lhe 
Paris Convention set out in the First Schedule hereto; 
"Registrar" means the Registrar of Marks, Patents and Designs 
appointed under section 4; 
"right of priority" means the right of priority provided for in Aniele 
4 of the Paris Convention; 
"trade name" means the name or designation by which a business or 
enterprise is distinguished; and 
"utility model certificate" means a certificate gr:mted for an invention 
in aceordance wifu section 35. 
3. There shal1 be established, at such place as the Minister may 
detennine, a Patents, Marks and Designs Office. 
4. (1) There shall be a Registrar of Patents, Marks and Designs 
(referrcd to in this Act as "the Registrar") v:ho shall be a pubEe 
officer, and who shall, subjeet to the control of fue !v'linister, be 
responsible for fue administration of this Act, and who shall 
perfonn sueh functions, and exercise such powers as may be 
conferred on him by this Act or any other enactment. 
(2) The Registrar shall be appointed in accordance \vith the provi­
sions of the Public Service ACL 
(3) There shall a1so be a Deputy Registrar of Patents, Marks and 
Designs, and such num ber of Assistant Registrars as it m a y be eonsidered 
necessary to appoint, who shall also be pubEc officers and who shall, 
likewise, be appointed in accordance with the provisions of fue Public 
Service Act. 
(4) The Deputy Registrar and Assistant Registrars shall perfonn such 
functions, and exercise such powers as the Registrar may lawful1y 
perfonn or exercise under this Act or any other enactment. 
S. \Vithout derogating from the generality ofthe provisions of section 
4, the Registrar shall have me following functions and powers, namely 
to-Powers and 
functions of 
Registrar IPlNllIBW AlIIl 
Page 7 
(a) process all applications made in tenns of this Act; 
(b) grant patents and utility model certificates; 
(e) register industrial designs, marks and collective marks; 
(el) administer granted patents and utility model certificates and 
registered industrial designs, marks and collective marks; 
(e) establish and maintain a joumal of marks, patents and designs 
wmch he shall publish al1 matters that are required to be published 
under this Act. 
6. The Registrar shall have a seal of office wmch shall be affixed to 
every documentissued or granted bymm, and to any copy ofa document 
issued by mm in lieu of the original document 
7. (1) The Registrar shall maintain separate registers for patents, 
utility model certificates, industrial designs and marks and shall, in a 
section of the register of marks created for that purpose, also register 
collective marks. 
(2) In the registers referred to in subsection (1) shall be ente red such 
particulars as are required by this Act or such further particulars as the 
Minister may, by regu1ations, prescribe. 
(3) Any person may, upon payment of fue prescribed fee, and in 
accordance with any conditions wmch may be prescribed, consult, 
inspect or make a copy of, or obtain an extract from, any register referred 
to in subsection (1). 
PART II -Patents 
8. (1) An invention shall be patentable if it is new, involves an 
inventive step, and is industrially applicable. 
(2) An invention may be, or may relate to, a product or a process. 
(3) An invention is considered to be new if ir does not fonn part of 
prior arto 
(4) (a) For the purposes of tms Act, prior art, in relation to an 
invention, means anything wmch has been disclosed to the public, 
whether in B otsw ana or elsewhere, in a tangible fonn or orall y, or by use 
or in any other way, prior to the filing or priority date of fue application 
claiming the invention. 
(b) Disclosure ofinformation wmch would otherwise affeet the pat­
entability of an invention claimed in the application shall not affeet the 
patentability of that invention where me infonnation was disclosed 
during the twe1ve months preceding the filing date or, where priority is 
claimed, the priority date of the application -
(i) by the inventor; or 
(ii) by a third party wmch obtained the information direetly or 
indirectIy from the inventor. 
(5) An invention shall be considered as involving an inventive step if, 
having regard to fue prior art relevant to the application claiming the 
invention as defmed in subsection 4 Ca), it would not have been obvious 
to a person having ordinary sldll in the 3rt. Sea! of office 
Registers for 
patents, etc 
Patentable 
inventions lPlN/l IBW AII!I 
Page 8 
Matter 
excluded 
ftom patent 
protection 
Who may 
apply for a 
patent 
Right 
to patent (6) An invention shall be considered as being industrially applicable 
if it can be used in trade, or in any kind of industry including handicraft, 
agriculture. fishery and services. 
(7) An invention which is contrary to publie order or morality shall 
not be patentable. 
9. (1) For the purposes of this Act. the following shall. even if they 
are inventions, not be protected as patents -
(a) a discovery; 
(b) a scientific theory or mathematical method; 
(e) a literary, dramatie, musical or artistie work or other aesthetie 
creation; 
(ri) a scheme, rule or method for doing business, performing a 
mental act or playing a game; 
(e) a program for a eomputer; 
(j) methods for the treatment of the human or animal body by 
surgery; and 
(g) a diagnostic method praetised on me human or animal body. 
(2) The provisions of subsection (1) (j) and (g) shall not apply to any 
product for use in me methods referred to merein. 
10. (1) An applieation for a parent in respeet of an invention may be 
made by the inventor or by any other person who has aequired from the 
inventor me right te apply. 
(2) Unless otherwise agreed, joint inventors may apply for a patent in 
equal undivided shares. 
11. (1) The right to a patent shall belong te me inventor. 
(2) Iftwo or more persons have made an inventionjointiy, the right 
to me patent shall belong te mem jointIy. 
(3) Where two or more persons have made the same invention but 
independentIy of each other, the person whose applieation bears the 
earliest filing date, or, if priority is claimed, me person whose applieation 
bears the earliest validly claimed priority date shall, unless that appliea­
tion is abandoned or withdrawn by the applieant. or rejeeted by the 
Registrar. have the right to the patento 
(4) Where an invention is made in exeeution of a contraet of employ­
ment, the right to the patent shall, in the absenee of any agreement to me 
contrary, belong to me employer. 
(5) The inventor shall be named as su eh in the patent, unless, in a 
special declaration in writing signed by him and addressed to the 
Registrar, he indicates mat he wishes not to be named, and any promise 
orundertaking by me inventormade to any person to the effeet that he will 
make sueh a declaration shall be wimout legal effeet 
12. The right te a patent may be transferred by cession, assignment, 
testamentary disposition or by operation of law. 
13. (1) Every application for a patent shall be filed with me Registrar 
and shall be aecompanied by sueh fee as may be prescribed, as well as the 
following-Transfer of 
rights to a 
patent 
Application 
for a patent Division oí 
application 
Joint 
applicants IP/N/UBWA/lIJ 
Page 9 
(a) a request wruch shall contain a petition fuat a patent be granted in 
respect of fue invention in question, fue name and such ofuer in­
formation as may be prescribed relating te fue appUeant. fue name 
and such ofuer infonnation -as may be prescribed relating to fue 
inventor and agent if any. as well as fue title of fue invention; 
(b) a description of fue invention wruch shall disclose fue invention 
in a manner wruch is sufficiently clear and complete to pennit a 
person having ordinary skill in fue art to carry out fue invention, 
and wruch shall indicate at least one mode known to fue applicant 
in wruch fue invention can be perfonned; 
(e) a clear and concise claim or claims defrning fue matter for wruch 
protection is sought, wruch claim or claims shall be fully sup­
ported by fue description; 
(el) such drawings or illustrations as may be necessary for fue under 
standing of fue invention; and 
(e) an abstract in fue prescribed form, wruch abstract shall not be 
taken into account for the purposes of interpreting the scope of fue 
protection, but shall serve merely as technical infonnation. 
(2) Any person who makes an appUcation for a patent but is not fue 
inventor shall fumish to fue Registrar, in writing, a st'atement justifying 
rus right to the patento 
(3) An applicant may, at any time before the patent is granted, 
withdraw rus application. 
14. (1) The applicantmay, ofrus owninitiative at any time before the 
grant of a patent, amend or correct rus application. 
(2) The appUcant shall not, in amending rus application under this 
section, inelude any material matter wrueh was not disclosed in the initial 
application as filed. 
15. (1) An application for a patent shall be in respect of a single 
invention or, where iris in respeetofa group ofinY$!1tions, fueinventions 
shall be so linked as to fonn a single general inventive concept. 
(2) The faet fuat a patent has been granted on an application that did 
not eomply with fue requirement of unity of invention shall not be a 
ground for the invalidation or revoeation of fue patento 
16. (1) The applicant may, at any time before the grant of a patent, 
divide rus application into two or more applications (hereinafier referred 
to as "divisional applications"), but eaeh divisional application shall not 
include any matter wruch was not disclosed in the initial applieation as 
filed. 
(2) Each divisional application shall be accorded fue same filing date 
and, where applicable, fue same priority date, as fue initial application. 
17. Where two or more persons ~pply jointly for a patent, fuey shall, 
in the absenee of an agréement te fue contrary, have equal undivided 
shares in the applieation and none of them shall deal wifu fue applieation 
in any way without the consent of the other applicant or applicants: 
Provided that if any steps are required te be taken to save the 
application from being abandoned, any applicant may, on rus own behalf 
as well as on behalf of any other joint applieant, take sueh steps without 
reeourse te fue other applicant or applicants. Amendment 
of appiication 
unity of 
invention IP/N/l/BW A/IIl 
Page 10 
Rightof 
priority 
Conversion of 
patent 
application into 
application foc 
utility model 
certificate 
Information 
conceming 
correspond­
ing foreign 
applications 
foc patents 18. (1) An application made under this Part may contain a declara­
tion, in writing, claiming the priority, as provided for in Article 4 of the 
Paris Convention set out in the First Schedule hereto, of one 
or more earlier national, regional or intemational applications filed by 
the applicant or rus predecessor in title in any convention country. 
(2) Any person who makes a deelaration of priority under subsection 
(1) shall, within such time as may be prescribed, fumish the Registrar 
with a copy of the application earlier fIled wruch copy shall be certified 
as correct by the patent office with wruch it was so earlier filed. 
(3) Where an applicant does not satisfy the requirements of 
subsection (2), and any regulations pertaining thereto, the declaration 
shall be considered as having not been made. 
(4) The effect of the deelaration referred to in subsection (1) shall be 
as provided in Artiele 4 of the Pans Convention. 
19. (1) Atany time be fo re the grant orrefusal ofa patent, an applicam 
for a patent may, upon payment of the prescribed fee, convert rus 
application for a patent into an application for a utility model certificate. 
(2) No person may convert an application under subsection (1) more 
than once. 
20. (1) The applicant shall, if requested by the Registrar, fumish rum 
with the date and number of any applications filed by him outside 
Botswana relating to the same or essentially the same invention as that 
elaimed in the applkation filed with the Registrar. 
(2) That applicant shall a1so, ir requested by the Registrar, fumish rum 
with the following documents relating to one of the applications referred 
to in subsection (1)-
(a) a copy of any communication received by the applicant concern­
ing the results of any search or examination carried out in respect 
of the said application; 
(b) a copy of the patent or other title of protection granted in respect 
of that application; 
(e) a copy of any final decision rejecting the application or refusing 
the grant requested in respect of the applkation; and 
(d) a copy of any final decision revoking orinvalidating the patent or 
other title of protection granted in respect of that application. 
21. (1) The filing date of an application for a patent shall be the date Filing date of 
on wruch the applkation is received by the Registrar: application for 
Provided that at the time of its receipt, the application contains _ a patent 
(i) an express or implicit inrucation that the grant of a patent is 
sought, 
(ii) informatíon wruch will enable the Registrar to establish the 
identity of the applicant, and 
(üi)information which, on the face of ir, appears to be a descrip­
tion of the invention. 
(2) Where the application does not comply with the requirements of 
subsection (1), the Registrar shall, in writing, .request the applicant to 
supply him with information lacking in the application and shall accord 
to the application, as the m.ing date, the date on wruch the further 
inforrnation required is received by rum. Rights con­
íerred 
by patent IP/NII IBW A/I/! 
(3) If an applicant fails to comply with any request made by fue 
Registrarunder subsection (2), his application shall be treated as fuough 
ir had never been filed. 
(4) Where the application makes reference to drawings which are no! 
included in fue application, the Registrar shall request the applicant to 
furnish him with the drawings within such time as may be prescribed, and 
shall accord to the application, as the filing date, the date on which such 
drawings are received by rum. 
(5) If the applicant fails to comply with any request made by the 
Registrar under subsection (4). the Registrar shall accord to the applica­
tion, as the filing date, the date on wruch the application was received by 
him, and shall treat any reference to the said drawings as being non -
existent. Page 11 
22. (1) After according a filing date to an application, fue Registrar Ex amination 
shall examine that application to det~rmine whefuer such application oí applications 
compEes with the requirements of section 13(1) and (2) and the regula~ 
tions pertaining thereto. 
(2) The Minister may. by regulations, prescribe fue categories of 
inventions in respect ofwhich an examination underthis section shall no! 
cover the requirements of nove1ty and inventive step. 
23. (1) Where the Registrar 1S satisfied that the requirements of Grantofpatent. 
section 22 have been fulfilled, he shall grant fue .~plicant a patent; 
otherwise he shall refuse the application and notify fue applicant of that 
decis10n. 
(2) Where he grants a patent, the Registrar shall-
(a) issue a certificate offue grant offue patent and a copy ofthe patent 
to fue applicant; 
(b) record the said patent in the patent register, and 
(e) publish, in the Joumal, a reference to the grant of the patent. 
(3) The Registrar shall, on payrnent of such fee as may be prescribed, 
make a copy of any patent granted in terms of this section available to any 
person who requests such copy. 
(4) The Registrar shall, upon the request of the owner of the patent, 
make changes in the text or draWings of the patent in order to limit the 
extent of the protection conferred thereby. 
24. (1) No person shall exploit, in Botswana, an invention patented 
in Botswana unless he has been, authorised, in writing, to do so by the 
owner of that patento 
(2) For the purposes of this section, exploitation of a patented 
invention means -
(a) where the patent has been granted in respect of a product-
(i) making, importing into Botswana, offering for sale, selling 
and using that product, 
(ti) stocking such product for the purposes of offering it for sale 
or selling or using it, and 
(b) \Vhere the patent has been granted in respect of a process-íPIN/l/BWA/l/l 
Page 12 
Proceedings 
for infringe­
roen! (i) using that process. and 
(ü) doing any act referred to in paragraph (a) in respect of a 
product obtained directly by means of mat process. 
(3) (a) The rights under the patent shall not extend to -
(i) acts in respect of artieles wruch have been put on the market 
in Botswana by the owner of the patent or wim rus consent, 
(ü) the use of artieles on aircraft, land verucles or verucles of 
other countries wruch temporarily or accidentally 
enter me airspace, territory or waters of Botswana. 
(iü) acts done only for experimental purposes relating to a 
patented invention, or 
(iv) acts performed by any person who in good faith, before me 
filing or, where priority is elaimed, the priority date of me 
application on wruch the patent is granted and in Botswana. 
was using the invention or was making effective and serious 
preparations for such use. 
(b) The right of prior user referred to in paragraph (a)(iv) may be 
transferred or may devolve only together with the enterprise or 
business, or with that part of the enterprise or busincss, in wruch 
the use of preparations for use have been made. 
25. (1) The owner ofthe patent shall, in addition to any other rights, 
remedies or actions available to rum, have the right, subject to sections 
26, 30 and 31, to institute court proceedings against any person who 
infringes the patent by performing, withour rus agreement or authonza­
tion, any ofthe acts refcrred to in section 24 (2), or who performs any act 
wruch makes it likely that infringement will occur. 
(2) A plaintiff in proceedings for infringement shall be entitled to 
relief by way of-
(a) an interdict; 
(b) delivery up or destruction of any infringing producto artiele or 
product of wruch the infringing product forms an inseparable part; 
(e) damages; or 
(d) an account of the profits derived from the infringement. 
(3) The court shall not, in awarding damages under this section, also 
order, in respect ofthe same infringement, that me plaintiffbe given an 
account of me profits derived by him from the infringement. 
(4) In any proceedings for infringement. me defendant may counter­
c1aim for me invalidation ofthe patent and, by way of defence, rely upon 
any ground on wruch a patent may be invalidated. 
(5) In any proceedings under this section, the plaintiff shall, before he 
institutes me proceedings, give notice thereofto every licensee underthe 
patent in question whose name is recorded in me patent register, and any 
such licensee shall be entitled to intervene as co-plaintiff. 
(6) The court shall, in awarding damages under this section, calculate 
such damages taking into account the amount of a reasonable royalty 
wruch would have been payable by a licensee or sublicensee in respect 
of me patent concemed. Jomt 
ownership of 
patent ¡P/NllIBWAIIIl 
Page 13 
26. A patentee shall not be entitled to recover damages or to obtain an 
account of profits in respect of a patent, from a defendant w ho proves mat 
at me date ofthe infrlngement he was not aware, and had no reason to be 
aware, of the existence of the patent, and me marking of an artiele wim 
the word "patent" or "patented" or any word or words expressing or 
implying mat a patent has been obtained for me artiele, stamped, 
engraved, impressed on or otherwise applied to the artiele, shall not be 
deemed to constitute notice of me existence of the patent unless such 
word or words are accompanied by the number of the patent: 
Provided that nothing in tms section shall affect any proceedings for 
an interdict in respect of me patent in question. 
27. (1) Subject to subsection (2), a patent shall expire 20 years after 
me filing date thereof. 
(2) In order to maintain a patent or patent application, the owner of a 
patent or the applicant shall pay in advance to the Registrar for each year 
starting one year after the filing date ofthe application fo~ the grant ofthe 
patent, such annual maintenance fee as may be prescrlbed. 
(3) A patent shalllapse or a patent application shall be deemed to have 
been withdrawn if the owner thereof fails to comply with the provisions 
of subsection (2): 
Provided that where the owner of the patent is late pa ying me annual 
maintenance fee, the Registrar shall, upon the payment by such owner, 
of such surcharge as may be prescrlbed, give mm a perlod of grace not 
exceeding six months, within wmch he must pay the said late annua! 
maintenance fee. 
28. A patent in respect of wmch Botswana is a designated State, 
granted by ARIPO by virtue of the ARIPO Protocol, shall have the same 
effect and enjoy the same protection in Botswana as a patent granted 
under this Act unless the Registrar communicates, to ARIPO, in respect 
of the application merefor, a decision, in accordance wim me provisions 
of the Protocol, mat if a patent is granted by ARIPO, that patem shall have 
no effect in Botswana. 
29. (1) Where a patent i5 granted to two or more persons jointly, each 
of the joint patentees shall, in me absence of an agreement to me contral)', 
be entitled to an equa! unmvided share in me patento 
(2) Subject to me provisions of subsection (4), a joint patentee sha!l 
not be entitled, in me absence of an agreement to me contrary. and in the 
absence of me consent of me joint patentee or patentees, to -
(a) make, use, exercize or dispose of me patented invention; 
(b) grant a licence or assign me whole or any part of ms imerest in 
me patent; or 
(e) take any steps or institute any proceedings relating to me 
patent: 
Provided mat he may pay any annual maintenance fee wmch is 
payable wimout recourse to any other patentee. Restricuon on 
recovery of 
damages for 
infringement 
Durauon and 
maintenance 
ofpatent 
ARIPO 
Protoco! 
patents íPIN/] lB W AIIIl 
Page 14 
Exploitation by 
Government or 
person thereby 
authorized (3) Where a patented artiele is disposed of by a joint patentee, the 
person who acquires the patent, or any person making a elaim through 
him shall be entitled to deal with that artiele in the same manner as though 
the artiele had been disposed of by the patentees jointly. 
(4) Any joirltpatenteemay institute proceedings forinfringement and 
shall give notice thereof to any other joint patentee, and any such other 
patentee may intervene as co -plaintiff and recover any damages in 
respect of any damage he may have suffered as a result of the infringe­
ment. 
(5) If, in any proceedings under subsection (4), damages are awarded 
to a plaintiff. he shall be a warded damages as if he were the sole patentee, 
and the defendant shall not be obliged to compensate any other patentee 
in respect of the infringement in question. 
30. (1) Where-
(a) the public interest, in particular national security, nutntlon, 
health or the development of other vital sectors of the national 
economy so requires; or 
(b) a court or administrative body has determined that the manner of 
exploitation of an invention by the owner of the patent or of rus 
licensee is anti-competitive and the Minister is satisfied that the 
exploitation of the patented invention in accordance with this 
section would remedy such practice, 
the Minister may decide that, even without the agreement or authoriza­
tion of the owner of a patent, a govemment agency or a third person 
designated byrum may, subjecttothe payrnentofanequitable remunera­
tion to the owner of that patent, and taking into account the economic 
value of the Minister's decision, exploit the invention: 
Provided that the Minister shall make rus decision after hearing the 
owner of the patent and any interested person if they wish to be heard. 
(2) The exploitation of the invention by the Govemment agency or 
third person designated by the Minister shall be predominantIy for the 
supply of the domestic market in Botswana. 
(3) Upon the request of the owner of the patent, of the Government 
agency or the third person authorized by the Minister to exploit the 
patented invention, the Minister may, after hearing the parties, if they 
wish to be heard, vary the tenns of the decision authorizing the exploi­
tation of the patented invention to the extent that changed circumstances 
justify such variation. 
(4) Ca) Upon the request of the owner of the patent to do so, the 
lvlinister shall revoke rus decision if he is satisfied, after hearing the 
parties, if they wish to be heard, that the circumstances which led te rus 
decision have ceased to exist and are unlikely to recur, or that the 
Govemment agency or trurd person designated by him has failed te 
comply with the tenns of the decision. Compulsol)' 
licences IPlNllIBW AlIIl 
Page 15 
(4) (h) Notwimstanding the provisions ofparagraph (a), the Minister 
shall nol tenninate me authonzation to exploit the patented invention if 
he is satisfied that the need for the adequate protection of the legitimate 
interest of the Government agency or third person designated by him 
justifies the maintenance of ms decision. 
(S) Where a third person has been designated by me Minister under 
tms section, the authorization to exploit the patented invention may be 
transferred onIy with me enterprise or business within wmch me patented 
invention is being exploited. 
(6) The authorization to exploit a patented invention shall no! 
exclude-
(a) the conclusion of licence contracts by the owner of the patent; or 
(h) the continued exercize, by the owner of the patent, of his rights 
under section 24 (2). 
(7) (a) A request for the Minister's authoriiation to exploit a patented 
invention shall be accompanied by evidence that the ownerofme patent 
has received, from me person seeking mat authorization, a request for a 
contractuallicence, but that person has been unable, within a reasonable 
time, to obtain such a licence on reasonable commercial tenns and 
conditions. 
(h) Paragraph (a) ofthis subsection shall not apply in cases ofnational 
emergency or other circumstances of extreme urgency: 
Provided that in such cases me Minister shall notify the owner ofthe 
patent of ms decision as soon as is reasonably practicable. 
(8) The exploitation of a patented invention in me field of semi­
conductor technology shall be authorized by me Minister only where 11 
court or administrative body has detennined that the manner of exploi­
tation of the patented invention, by the owner of the patent or of ms 
licensee. is anti-competitive, and if the Minister is satisfied mat the 
issuance of the non-volunta:ry licence would remedy such practice. 
(9) Any person who 1S aggrieved by a decision of the Minister under 
subsection (1), (2) or (3) may appeal to the High Court against fuat 
decision. 
31. (1) At any time after fue expiration of furee years from me date 
of the grant of 11 patent or four years from fue date of me application 
fuerefor, wmchever happens later, any interested party may apply to fue 
High Court for me grant of a licence under the patent upon any of the 
grounds specified in subsection (2) of this section. 
(2) The grounds upon wmch a licence may be granted under mis 
section are that a market for fue patented invention i5 not being supplied, 
or is not being supplied on reasonable tenns, in Botswana. 
(3) Subject to fue provisions ofsubsections (4), (5), (6) and (7) ofthis 
section, if the High Court is satisfied mat eimer of the grounds specified 
in subsection (2) of me section have be en established, fue Court may 
make an order for me grant of a licence in accordance with the application 
upon such tenns as me Court thinks fit. IPINllIBW A/IIl 
Page 16 
Termination 
of contracts 
relating to 
licences 
mvalidation 
of patent (4) A licence granted under this section -
(a) shall not be exclusive; 
eb) shall not be assigned o!herwise !hat in connection wi!h !he good 
will of!he business in which !he patented invention i5 used; and 
(e) shall be authorized by the court for the supply of the patented 
invention predominantly in Botswana. 
(5) A licence granted under this section may, on !he application of any 
interested party, be terminated by the Court where the Court i5 satisfied 
that the grounds on which the licence was granted have ceased to exist and 
are unlikely to recuro 
(6) Where a licence is granted under this section to any person, !hat 
person shall pay, to the patentee, such remuneration as may be agreed, or 
as may be determined by a method agreed. between !hat person and the 
patentee, or, in default of!he agreement. as is determined by !he Court on 
!he application of that person or the patentee. 
(7) No licence shall be granted under this section unless the person 
applying for the licence, having taleen all reasonable steps to do so, has 
been unable to obtain a licence, or to obtain a licence on reasonable terms, 
from !he owner of the patent. 
(8) No licenee shall be granted under this section in respeet of a patent 
relating to an integrated circuit. 
32. Any contraet relating to a licenee under a patent to make, use, 
exercize or dispose of a patented invention shall terminate on the date on 
which the patent under whieh the licenee was granted expires, is revoked 
or otherwise ceases to protect such invention. 
33. (1) Subject to the provisions of this Act, !he High Court may! on 
!he application of any interested party, invalidate a patent on any of!he 
following grounds -
(a) !hat!he invendon is not an invention within !he meaning of the 
term as defmed under this Act; 
(b) !hat!he patentee is not a person entitled. under section 10, to apply 
for a patent; 
(e) that the patent coneemed is not patentable under section 8; 
(el) that !he invention is a matter whieh should, in accordanee with 
seetion 9, have been excluded from patent proteetion; 
(e) that the patentee' s applieation did not satisfy !he requirements of 
seetion 13 (a), (b) and (e); 
(j) that the applicant for the patent has failed to inform the Registrar 
about any eorresponding intemational applieation filed or has 
fumished inforrnation which in any material particular was false; 
or 
(g) that!he patent was obtained on a misrepresentation. 
(2) Any invalidated patent, claim or part of a claim shall be regarded 
as being null and void from !he date of !he grant of !he patento 
(3) An application for !he invalidation of a patent shall be served on 
!he patentee and lodged with the Court in !he manner and within the time 
prescribed. IPINIIIBWA/II1 
Puge 17 
(4) The Master shall notify the Registrar of any decision ofthe Court 
to invalidate a patent and the Registrar shall, within such time and such 
manner as may be prescribed, publish a reference thereto in the JournaL 
PART -Utility Model Certifieates 
34. Save as provided under the provisions ofthis Part, the provisions 
of Part II shall apply, mutatis mutandis, to utility model certificates or 
applications therefor. 
35. (1) An invention shall qualify for a utility model certificate ifit 
is new and industrially applicable. 
(2) Section 22 (2) shall not apply to any application for a utility model 
certificate. 
36. A utility model certificate shall expire seven years after the filing 
date of the application therefor. 
37. (1) Subject to the provisions ofthis Act, the High Court may, on 
the application of any interested person, invalidate a utility model 
certificate on any of the following grounds -
(a) that the invention relating to the certificate­
(i) is not new or industrially applicable, or 
(ti) is contrary to public order or morality; 
(h) that the description and claim or claims do not disclose the 
invention in a manner sufficiently clear and complete to permit a 
person having ordinary skill in the art to carry out the invention 
and do not indicate at least one mode known to the applicam for 
carrying out the invention; 
(e) that the claim or claims do not define the matter for which 
protection is sought; 
(d) that the claims are not clearor concise and are not fully supported 
by the description; 
(e) that such drawings as are necessary for!he understanding of the 
invention have not been filed as provided under thls Act; and 
(j) that the person to whom !he utility model certificate has been 
granted is not the inventor or his successor in title. 
(2) An application for the invalidation of a utility model certificate 
shall be served on the person to whom the certificate has been issued and 
lodged with the Court in the manner and within the time prescribed. 
(3) The Master shall notify the Registrar of any decision ofthe Court 
to invalidate a utility model certificate and the Registrar shall, withln 
such time as may be prescribed, pubUsh a reference theretoin!he Journal. Applicabilíty 
of provísions 
relating to 
patents 
Qualification of 
invention for 
milíty mooel 
certificate 
Dl.lration of 
utility mooel 
certifi cate 
lnvalidation of 
utility mooel 
certifi cate IP/N/l/BWA/I/1 
Page 18 
Conversion 
of application 
for utility 
mooel certificate 
¡nto application 
for patent 
Registrable 
industrial 
desi¡p1 
Right to 
industrial 
design 
Transfer of 
right to a 
design 
Applicatíon 
for registration 
of design 38. (1) At any time before the grant or refusal of a utility model 
certificate. an applicantmay, upon paymentofthe prescribed fee, convert 
bis application for a utility model certificate into an application for a 
patent, and the latter application shall be accorded the filing date of the 
ÍllÍtial application. 
(2) No person may convert an application under subsection (1) more 
than once. 
PART IV -Industrial Designs 
39. (1) An industrial design (hereinafter referred to as "a design") 
shall be eapable of being registered if it 1S new. 
(2) A design shall be deemed to be new if ir has not been disclosed to 
the publie anywhere in the world by publication in a tangible forrn, or by 
use or in any other way, prior to the filing date or, where applieable, the 
priority date of the applieation for registration. 
(3) Disclosure of information which would othenvise affeet the 
re gi strabilit y of a design claimed in th,e application shall not affeet the 
registrability ofthat design where the information was disclosed, during 
the twelve months preeeding the flling date of the application or, where 
priority is claimed, the priority date of fue application -
(i) by the inventor, or 
(H) by a thlrd party wruch obtained the information directly or 
indirectly from the inventor. 
(4) A design wruch is contrary to public order or morality shall not be 
registered. 
40. The provisions of section 11 shall apply mutatis mutandis in 
relation to a designo 
41. The right to a design may be transferred by cession, assignment, 
testamentary disposition or by operation of law. 
42. (1) An application for the registration of a design shall be made 
to the Registrar in the preseribed manner and shall be accompanicd by the 
following -
(a) a request, in writing, that the design be registered; 
(b) drawings, photographs or other graphic representations ofthe 
artiele embodying fue design; 
(e) a statement, in writing, indieating the kind ofproducts for which 
the design is to be used; and 
(d) such application fce as may be prescribed. 
(2) Where the design is two dimensional, the application may be 
accompanied by a specimen of the artiele embodying the design. 
(3) Any person who makes an application to the Registrar for the 
registration of a design but is not the creator of the design shall furnish 
to the Registrar, in writing, such proof ofros title or authority to apply for 
registration as may be prescribed. Registration of 
design IP/N/lIBW AIIII 
Page ]9 
(4) An application under thls section ma y be in respect oftwo ormore 
designs: 
Provided that the designs relate to the same elass of Intemational 
Classification or to the sarue set or composition of artieles. 
(5) For me purposes of thls section,"Intemational Classification" 
means the elassification according to the Locamo Agreement of 8th 
October, 1968, establishlng an Intemational Classification for Industrial 
Designs. 
(6) The application, at the time of ming, may contain a request that the 
publication of the industrial design, upon registration, be deferred for a 
period not exceeding twel ve months from the date of ming or, if priority 
is elaimed, from the date of priority, of the application. 
(7) The applicant may, at any time before the registration of a design, 
withdraw his application. 
43. The provisions of section 18 shall apply mutatis mutandis in 
relation to a designo 
44. (1) The Registrar shall accord, as the filing date of an application, 
the date on which such application i5 received by him: 
Provided that at the time of its receipt, the application contains 
information allowing the identity of the applicant to be established and 
the required grapruc representation ofthe artiele embodying the designo 
(2) Where the application does not comply with the requirements of 
subsection (1). the Registrar shall, in writing, request the applicant to 
supply rum with the information lacking in the application and shall 
accord to the application, as the filing date, the date on which the further 
information was med with rum. 
(3) If an applicant fails to comply with any request made by the 
Registrar under subsection (2), rus application shall be treated as though 
it had never been filed. 
45. After according a filing date to an application, the Registrar shall 
examine the application to determine whether-
(a) itcomplies with the requirements ofsection 42 (1) and (3) and the 
regulations pertaining thereto; 
(b) ir complies with the definition of a design under this Act; 
(e) ir complies with such appropriate regulations as may have been 
made in pursuance of thls Part; and 
(d) the design is not contrary to public order or morality. 
46. (1) Where, following the examination referred to in section 45, 
the Registrar is satisfied that the requirements of this Act have been 
fulf1l1ed, he shall register the designo 
(2) Where the Registrar registers a design, he shall, within such time 
as may be prescribed -
(a) issue, to the appUcant, a certificate of registration of the design; 
(b) record such registration in the register, and 
(e) publish, in the Joumal, a reference to the registration of the 
designo Rightof 
priority 
Filing date of 
application 
Examination of 
application íPIN/I/BWAIII1 
Page 20 
Rights con­
ferred by 
registration (3) (a) Notwithstanding the provisions of subsection (2), where a 
request has been made under section 42 (6) for deferment of publication, 
neither the representation of the design nor any me relating to the 
application shall, upon registration of the design, be open to public 
inspection; and in this case, the Registrar shall publish, in the Joumal, a 
mention of the deferment of the publication of the industrial design and 
infonnation identifying the registered ownerofthe design, and indicating 
the filing date of the application, the length of the perlod for which 
defennem has been requested, and such other particulars as may be 
prescribed. 
(b) At the expiry ofthe period of defennem, the Registrar shall publish, 
in the Joumal, the registered designo 
(4) The institution of legal proceedings on the basis of a registe red 
design during the period of deferment of publication shall be subject to 
the condition that the inf0rmation contained in the Register and in the file 
relating to the application has been commurueated to the person against 
whom the aetion is brought. 
(5) An applieation whieh, owing to any default or neglect on the part 
of the applicant, has not been eompleted so as to enable the registration 
to be effected within the prescribed period shall be deemed to have be en 
abandoned. 
47. (1) No person shall exploit, in Botswana, a design registered in 
Botswana unless he has been authorized, in writing, to do so by the owner 
of that registered designo 
(2) The person registered as the owner of a design shall, subject to the 
provisions of this Act, and to any rlghts appearing from the register of 
designs to be vested in any other person, have the exclusive right, in 
Botswana, to make, import or sell any artiele bearlng or embodying the 
registered design or a design not substantially different from the regis­
tered design, when su eh acts are undertaken for commercial purposes. 
(3) For the purposes ofthis section, exploitation of a registered design 
means the doing of any aet specified in subseetion (2). 
(4) The rights of the owner of a registered design shall not extend to 
acts in respeet of whieh artieles whieh have been put on the market in 
Botswana by sueh owner, or with his consent. 
48. (1) The owner of a registcred design shall, in addition to any other 
rights, remedies or actions available to him, have the right to institute 
court proceedings against any person who infringes the design by 
perfonning. without his agreement or authorization, any of the acts 
referred to in section 47, or who performs acts which make it likely that 
infringement will oecur. 
(2) In any proceedings underthis section, the courtmay grant reliefby 
way of damages, interdict, delivery up or destruction of any infringing 
produet, artiele or produet of which the infringing product forros an 
inseparable part, or account of profits derlved from the infringemcl1t or 
otherwise as it may deem fit. Proceedings 
for 
infringemem Invalidation 
oí registration 
oí design IPIN/1I8WA/U1 
Page 21 
(3) The court shall not, in awarding damages underthis section, aiSD 
order, in respect of the same infringement, that the plaintiff be given an 
account of me profits derived by mm from the infringement. 
(4) In any proceedings under this section, the court shall have jurisdic­
don to order me revocation of the registration of a design on any of the . 
grounds specified in secti on 52, and an y such grounds ma y be relied u pon 
by way of defence. 
49. (1) The registration in respect of a design shall expire five years 
after the filing date of the application for its registration, but may, upon 
payment of such renewal fee as may be prescribed. be renewed for two 
further consecutive periods of five years each. 
(2) Where the owner of the design is late paying the renewal fee, the 
Registrar shall, upon payment by the said owner of such surcharge as may 
be prescribed, givehim a period of grace notexceeding six months withiii 
which he must pay the said late renewal fee. 
50. An industrial design in respect ofwhich Botswana is a designated 
State, registered by ARIPO by virtue of the ARIPO Protocol, shall have 
the same effect in Botswana as a design registered under this Act unless 
the Registrar communicates, to ARIPO, in respect of the application 
therefor, a decision, in accordance with the provisions of the Protocol, 
that if a design is registered by ARIPO, that registration shall have no 
effect in Botswana. 
51. (1) Subject to the provisions of section 42 (6), the representa­
tions, specimens and drawings of a registered design, including al1 
documents lodged in relation thereto shall, upon payment of such fees as 
may be prescribed, be open to inspection by any person on and after the 
day on which the certificate of registration is issued: 
Provided that the right of inspection shall not include the right to 
make a eopy of any sueh representation, drawing or doeument by 
mechanieal means. 
(2) Any person may. upon payment of such fees as may be prescribed, 
obtain, from the Registrar, a eopy of sueh representations, drawings or 
doeuments. 
(3) When an application for the registration of a design has been 
abandoned or refused, the representations, drawings or omer documents 
shall not, at any time, be open to inspection at the designs office, but shall, 
after me explration of 12 months from the date of application for su eh 
registration, be retumed to the applicant if he requests that they be so 
retumed to rum. 
52. (1) Subject to the provisions ofthis Act, the High Court may, on 
the application of any interested person, invalidate the registration of a 
design either wholly or in part or in respect of any particular article in 
connection with which the design is registered on any of the following 
grounds-
(a) that the design was not new; Duration and 
renewal oí 
registered 
design 
ARIPO 
Protocol 
designs 
Inspection oí 
registered 
design IPIN/lIBWA/UI 
Page 22 
Acquisition 
of exclusive 
right to a 
mark (b) that the applicant for registration was not the owner thereof; 
Ce) that the application was made with the intention of defrauding 
the owner of the design; or 
(d) on any ground on which the Registrar could have refused to 
re gister the designo 
(3) An application for the invalidation of a design shall be served on 
the person in whose name the design is registered and lodged with the 
Court in the rnanner and within the time prescribed. 
(4) The Master shall notify the Registrar of any decision of the Court 
to invalidate a design and the Registrar shall, within such time as rnay be 
prescribed, publish a reference therete in the Joumal. 
PART V -Marks, Colleetive Marks and Trade Names 
53. (1) The exclusive right to a rnark under this Act shall be acquired 
by registration in accordance with the provisions hereof. 
(2) A rnark shall not be registered if it is -
(a) incapable of distinguishing the goods or services of one enter­
prise or business from those of another enterprise or business; 
(b) contrary te public arder or rnorality; 
(e) likely to rnislead the public or trade circles, in particular as 
regards the geographical origin of the goods or services 
concemed, or theÍr nature or characteristics; 
(d) identical to, or is an imitation of, or contains, as an element, 
an armorial bearing, flag or other emblem, a name, abbreviation 
or initi al s of, or official sign or hall mark adopted by, any State, 
intergovernmental organization or organization created by an 
intemational convention, unless the competent authority of that 
State or organization has given his authorization for such bear­
ing, flag. embIem, name, abbreviation or initials, official sign or 
hallmark to be used by an applicant for a registered mark; 
(e) identical to, or confusingly similar to, or constitutes a transIation 
of, a mark or trade name wruch is well known in Borswana for 
identical or similar goods or services of another enterprise, or if 
ir is well known, and registered in Botswana for goods or 
services which are not identical or similar to those in respect of 
which registration is applied for: 
Provided, in the latter case, that -
(i) the use of that mark in relation to those goods or services 
would indicate a connection between those goods or 
services and the owner of the well known mark, and 
(H) that the interests of the owner of the well known mark are 
likely te be prejudiced by sueh use; or 
(j) identical to a mark belonging to a different owner of a registered 
markand alreadyon the register,orwith anearlierfllingorpriority 
date, in respect of the same goods or services or c10sely related 
goods or services, or ifit so nearly resembles su eh a mark as to be 
likely te deceive or cause confusion. iP/NIJ/BWA/IIl 
Page 23 
54. (1) An application forthe registration of a mark, accompanied by 
such fee as may be prescribed, shall be made to the Registrar in fue 
prescribed manner and shall contain the following -
(a) a request, in writing fuat the mark be registered; 
(b) a reproduction of fue mark; 
(e) a list ofthe goods or services for which registration ofthe mark is 
requested, listed under the applicable c1ass or c1asses offue Inter­
nadonal Classification. 
(2) The provisions of section 18 in respect of the right of priority shall 
apply mutatis mutandis. 
(3) The applicant may, at any time before his mark is registered, 
withdraw his application. 
55. (1) The Registrar shall examine fue application to determine 
whetherit com plies wifu the requirements of section 54 (1) and any other 
requirements as may be prescribed. 
(2) The Registrar shall also determine whether fue mark complies 
wifu fue definition of a mark under this Act, and whemerit complies with 
the requirements of paragraphs (a) to (d) of section 53 (2). 
(3) The Registrar shall, if he is satisfied that me application complies 
wim me requirements of fue provisions of this section, accept that 
application and shall, within such time and in such manner as may be 
prescribed, publish that application in me Joumal. 
56. (1) Any interested person may, on the ground fuat me require­
ments of section 53 (2) have not been satisfied, or that me mark does not 
comply wifu fue definition of a markas specified in this Act, give, to the 
Registrar within such perlod and in such manner as may be prescrlbed, 
notice of his opposition to fue registration of a mark. 
(2) The Registrarshall, as soon as he receives suchnotice, send acopy 
thereofto fue applicant who shall, within such period and in such manner 
as may be prescribed, send, to the Registrar, his written response fuereto 
(referred to in this section as a "counter -statement") specifying the 
grounds on which he relles for his application. 
(3) The applicant shall be deemed to have abandoned his application 
if he fails to comply with the provisions of subsection (2). 
(4) Where the appllcant files his counter -statement, the Registrar 
shall forthwith furnish a copy thereof to fue person opposing and shall, 
after hearing the parties, if ei ther wishes to be heard, and considering the 
merits of the case, decide whether the mark should be registered. 
(5) Following the publication of an application, and until the registra­
tion of me mark, the applicant shall have me same rights and privileges 
as he would have if fue mark had been registered, but it shall be a valid 
defence to an action brought hereunder in respect of an act done after the 
application was published, if me defendant establishes !hat me mark 
could not have been validly registered at me time the act was done. Application 
for registra­
tion of a mark 
Examination 
of application 
fOl registration 
of a mark 
Opposition to 
registration of a 
mark IPIN/I/BWAIIII 
Page 24 
Registration of 
mark 
Rights con­
ferred by 
registration of 
mark. 
Transfer of 
rights in marks 
Proceedings 
for 
infringement 57. (1) Where the Registrar is satisfied that theapplication for the 
registration of a mark satisfies the requirements of mis Act, and the 
registration of the mark has not been opposed wimin the period 
prescribed, or the registration of the mark has been opposed but he has 
decided in the applicant's f-avour, !he Registrar shall-
(a) register!he mark in !he appropriate register; 
(h) issue, to the applicant, a certificate of registration; 
and 
(e) publish, in the Joumal, a reference to the registration of the mark. 
(2) Where the requirements for !he registration of a mark are not 
satisfied, or an application for !he registration of a mark has been 
successfully opposed, !he Registrar shall re fu se to register that mark. 
58. (1) No person shali use a registered mark unless he has been 
authorized, in writing, to do so by the owner thereof. 
(2) The rights conferred by registration of a mark shali not extend to 
acts in respect of artieles which 9ave been put on !he market in Botswana 
by me registered owner or wi!h Ihis consent 
59. The rights in a mark may be transferred by cession, assignment, 
testamentary disposition or by operation of law. 
60. (1) The owner of a mark shall, in addition to any other rights, 
remedies or actions available to him, have the right to institute court 
proceedings against any person who infringes !he mark by using that 
mark without his authorization or by performing acts which make it 
likely thar infringement wiIl occur. 
(2) The right conferred under mis section shall extend to the use of a 
sign similar to the registered mark in relation 10 goods and services 
similar to those for which me mark has been registered, where confusion 
may arise in the publico 
(3) The right conferred under this section shall extend to me use of a 
sign which constitutes a reproduction. an imitation or a translation of a 
registered mark which is well known in Botswana in relation to goods or 
services which are not similar to mose in respect of which a trade mark 
is registered: 
Provided that such use of the mark in relation to those goods or 
services wouldinrucate a connection between those goods or services and 
me owner of the registered mark, and the interests of the o\VTIer of the 
registered mark are likely to be prejudiced by such use. 
(4) A plaintiff in proceedings for infringement shall be entitled to 
relief by way of an interdict, delivery up or destruction of any infringing 
product, artiele or product of which !he infringing product forros an 
inseparable pan, damages or an account of the profits derived from me 
infringement. 
(5) The court shall not, in awarding damages, also order, in respect of 
the sarue infringement, thar the plaintiffbe given an account ofthe profits 
derived by him from the infringement. Duration and 
renewal of 
registration of 
mane 
Banjul Protoco! 
on manes 
úwalidation of 
registration of 
mane 
Removal of 
mane on 
grounds of 
non-use 
Collective 
marks 1 PINIlIBW AIUl 
Page 25 
61. (1) The registration in respect of a mark shall expire ten years 
after the filing date ofthe application forits registration, but may, upon 
the written request and payment of the prescribed renewal fee by the 
registered owner, be renewed for consecutive periods of ten years. 
(2) Vv'here the owner of a registe red mark is late paying the renewal fee, 
the Registrar shall, upon payment by the said owner of such surcharge as 
may be prescribed, give him a period of grace not exceeding six months 
within which he must pay the late renewal fee. 
62. A mark in respect of which Botswana is a designated State, 
re giste red by ARIPO by virtue ofme Banjul Protocol. shallhavethesame 
effect and enjoy the same protection in Botswana as a mark registered 
under this Act unless me Registrar communicates, to ARIPO. in respect 
ofme appication merefor, a decision, in accordance wim me provisions 
of mat protocol, mat if a mark is registered by ARIPO, mat mark shall 
have no effect in Botswana 
63. (1) A personmay apply to the Registrar forthe invalidation ofthe 
registration of a mark on me ground mat me requirements of section 53 
(2) and the defmition of a mark as specified under thls Act, have not been 
satisfied. 
(2) An application for me invalidation of a registration of a mark shall 
be served on me owner of me mark in me manner prescribed. 
(3) Any invalidation of the registration of a mark shall be deemed to 
have been effective from me date of registration of the mark and a 
reference mereto shall be published by the Registrar in the Journal as soon 
as possible. 
64. (1) Any interested person may make application to me Registrar 
to remove, from the register, a mark in respect of any of the goods or 
services in respect of which it is registered on the ground that up to one 
month prior to filing the application, me mark had, after its registration, 
not been used by me registered owner or a licensee during a continuous 
perlod of three or more years. 
(2) The Registrar shall. not remove a mark from me register if the 
owner mereof can show that circumstances existed which prevented me 
use of me mark and that there was no intention no! to use the marle in 
respect of mose goods or services, or that there was no intention to 
abandon !he use of me mark in respect of the said goods or services. 
(3) Anapplication forme removalofamarkfrom theregisterofmarks 
shall be served on the owner thereof and flled with the Registrar in me 
manner and withln the time prescribed. 
65. (1) Subject to subsections (2) and (3), sections 53 to 64 ofthls Act 
shall apply to collective marks, sav'e1hat references therein to amark shall 
be read as being references to a collective mark. 
(2) An application for the registration of a collective mark shall 
designate the mark as a collective mark and sha11 be accompanied by a 
copy of the rules goveming the use of lhe collective mark. 
(3) For purposes of subsection (2), "rules" means !he rules made by 
the person under whose control the collective mark may be used. IPIN/l/BWA/!/l 
Page 26 
Invalidation 
of registration 
oí coHective 
mark 
Licensing oí 
marKs and 
collective 
marks 
Trade names 
Acts of unfair 
competition (4) The registe red owner of a collective mark shall notify the Regis­
trar, in writing, of any changes made in respect of the rules referred to in 
subsection (2). 
66. (1) In addition to the grounds set out in section 63 (1), the 
Registrar shall invalidate the registration of a collective mark if the 
person requesting the invalidation proves that only the registered owner 
uses the mark, or that he uses or permits its use in contravention of the 
rules referred to in section 65 (2), or that he uses or permits its use in a 
manner wruch is liable to deceive trade circles or the public as te the 
origin or any other common characteristics of the goods or services 
concemed. 
(2) An application for the invalidation of a collective mark shall be 
served on the owner of the mark in the manner and within me time 
prescribed. 
67. (1) Any licence contract made in relation to the registration of a 
mark or an application therefor shall provide for the effective control, by 
the licensor, of the quality of the goods or services of the licensee in 
connection with wruch the mark is used. 
(2) If the licence contract does not provide for such quality control or 
if such quality control is not effectively carried out, the licence contraet 
shall not be valido 
(3) The registration of a collective mark, or an application merefor, 
may not be the subjeet of a licence contracto 
68. (1) A name or designation may nor be used as a trade name if by 
its nature or me use to wruch it may be put, it is contrary to public order 
or morality and in particular, it is liable to deceive trade circles or the 
public as to the nature of me enterprise identified by that name. 
(2) (a) Notwimstanding any law providing for any obligation to 
register a trade name, such name shall be protected, even prior to or 
wimout registration, against any unlawful act commi tted by a third party. 
(b) Any subsequent use of me trade name by a third party, whether as 
a trade name , a mark or a colleetive mark, or any such use of a similar 
trade name ormark, wruchis likely te mislead me public, shall be deemed 
to be unlawful. 
PART VI -Acts of Unfair Competition 
69. (1) On the request of me owner of a title of proteetion under this 
Act, or of any competent aumority or any interested person, association 
or syndicate (in particular of produeers, manufacturers or traders), the 
courtmay grantaninterdict te prevent an actofunfaircompetition, award 
damages or grant any other remedy as the court may deem appropriate. 
(2) For the purposes of this Act, any act of competition wruch is 
contrary to honest practices in industrial or commercial matters shall 
constitute an act of unfair competition, and shall be unlawful. 
(3) The following, in particular, shall be deemed to constitute acts of 
unfair competition -Agents 
Cap 68:01 IPlNll IBW Alfil 
Puge 27 
(a) any act of such a nature as to create confusion by any means 
whatever with the establishment, the goods or the industrial or 
commercial activities of, a competitor, 
(b) the making of a false allegation in the course oftrade of su eh a 
nature as to discredit the establishment, the goods, or the industrial 
or commercial activities of, a competitor, and 
(e) the making of allegations which, in the course oftrade, is liable to 
mislead the public as to fue nature, the manufacturing process, the 
characteristics, the suitability for their purpose, or the quantity of 
fue goods of, a competitor. 
PART VII -Miseellaneous Provisions 
70. (1) Any change in the ownership of a patento a utility model 
certificate, the registration of an industrial design, mark or collective 
mark, or in fue ownership of an application therefor, shall be in writing 
and shall, at the request. to fue Registrar, of any interested party, be 
recorded by the Registrar in fue appropriate register, and except in the 
case of an application, be published by notice in me Joumal by the 
Registrar. 
(2) Any change in the ownership of a patent, a utility model certifi­
cate, fue registratíon of a design, mark or collective mark or in the 
ownership of an application therefor, shall have no effect against third 
parties unless it has been recorded by the Registrar in the appropriate 
register. 
(3) Any change in fue ownership of the registration of a collective 
mark, or in the ownership of an application fuerefor. shall require me 
prior approval, in writing, of the Minister. 
(4) A change in ownership of the registration of a mark or a collective 
mark shall be invalid if it is likely to deceive or cause confusion 
particularly in regard to fue nature, o rigin , manufacturing process, 
characteristics or suitability for their purpose. of me goods or services in 
relation to which fue mark or collective mark is intended to be used or is 
being used. 
71. Any licence contract concerning a patent, a utility model certifi­
cate, a registe red design or registered mark, or an application therefor 
shall have no effect against third parties unless it has been recorded by the 
Registrar in fue appropriate register. 
72. Every person wno makes an application under this Act for the 
grant or registration of a patent, utility model certificate, designo mark, 
or collective mark, or of any ofuer thing which may be applied for under 
this Act, and whose ordinary residence or principal place of business is 
outside Botswana shall be represented by a legal practitioner who has 
been enrolled 10 practice in the courts ofBotswana in accordance with the 
provisions of the Legal Practitioners' Act or such other person as fue 
Minister may prescribe. Changes in 
ownership 
Licence 
contracts íP/N/lIBW AIIIl 
Page 28 
Correction oí 
errors 
Exercize oí 
discretionary 
powers 
ExtensÍon of 
time for 
appHcations 
Offences 73. (1) The Registrar may correct any clerical error or error in trans­
lation or transcription.in any appli9ation filed under this Act, or in any 
document filed or lodged in pursuance of such application, and the 
Registrar may also correct any clerical error in any register maintained in 
pursuance of this Act. 
(2) Subsection (1) shall nor be construed as giving the Registrar any 
power to correct or amend any application, document or register in any 
material manner. 
(3) A correction made in pursuance of this section shall be made by 
the Registrar of his own accord or upon the request of any persono 
(4) Where any person requests the Registrar to correct any application 
or other document flled under this Act, that person shall pay, to the 
Registrar. su eh fee as may be prescribed. 
74. The Registrar shall give any party to a proceeding before him the 
opportunity of being heard before making any decision which he is 
empowered to make under this Act or the regulations thereto if that 
decision might adversely affect or prejudice that party. 
75. (1) Where anything is required to be done within a preseribed 
time and, by reason of a delay in the Marks, Patents and Designs Office 
that thing is not done, the Registrar may extend the time for the doing of 
that thing for such period as may be prescribed, and no fe es shall be 
payable in respect of any such extension. 
(2) Notwithstanding the provisions of subsection (1), the Registrar 
may. upon the written request of an interested person, and upon payment 
of such fee as may be prescribed, extend, for such period as may be 
prescribed, the time specified for the doing of any act if that person shows 
good cause as to why he did not do that act within the prescribed time. 
76. (1) Any person who, knowing the same to be false-
(a) makes or causes to be made a false entry in any register kept in 
terms of this Act; 
(b) makes or causes to be made any document falsely purporting to be 
a copy of an entry in any such register; 
(e) produces, tenders or causes to be produeed as evidence any such 
entry or eopy thereof, 
shall be guilty of an offenee and shall be Hable, on eonviction, to a fme 
ofnot less than P5 000,00 but not more than PI 0000,00, or to imprison­
ment for a term of not less than one year but not more than three years, 
or to both su eh fine and sueh imprisonment. 
(2) Any person who -
(a) for the purpose of deeeiving the Registrar or any other officer in 
the exeeution of his duties under this Aet; or 
(b) for the purpose of proeuring or influencing the doing or omission 
of any act under this Act, IPIN/lIBW A/íll 
Page 29 
makes a false statement or representation knowing the same to be false, 
shall be guilty of an offence and shall be liable, on conviction, lO a fme 
ofnot less than P5 000,00 but not more than PlO 000,00, orto imprison­
ment for a term of not les s than one year but not more than three years, 
or to both such fine and such imprisonment. 
(3) Any person who, knowing the same lO be false, makes a false 
statement or representation that-
(a) a patent has been granted to him or to any other person in respect 
of any invention; 
(b) he or any other person is the owner of any registered design, mark, 
collective mark or trade name; or 
(e) he has be en granted anexclusive orcompulsorylicence touse any 
patent, registered design, re giste red mark or collective mark or 
trade name, 
which statement or representation induces another person to act thereon, 
shall be guilty of an offence and shall be Hable, on conviction, to a fme 
of not less than P2 000.00 but not more than P5 000.00, or to 
imprisonment for a tem of not less than six months but more than two 
years, or to both such fine and imprisonment. 
(4) Subject to the provisions of sections 24 (3) (a), 30, 31,47 (4) and 
58 (2), the performance of any act referred to in section 24, 47 and 58 by 
a person other than the owner of the title of protection and without the 
agreement of such owner shall constitute an infringement. 
(5) The court may, on the application to it by the owner of the title of 
protection, or by a licensee ifhe has requested the ownerlO institute court 
proceedings for a specific relief and the owner has refused or failed to do 
so, grant an interdict to prevent an infringement or unlawful act referred 
to sections 68 (2) (b) and 69 (2). 
(6) Any person who intentionally or wilfully performs any act wmch 
constitutes an infringement as defined in subsection (4) of this section, 
or an unlawful act as defined in sections 67 (2) (b) and 68 (2) shall be 
guilty of an offence and shall be liable, on conviction, to a fine of not less 
than P2 000,00 but not more than P5 000,00, or to imprisonment for a 
term of not les s than six months but not more than two years, or to both 
such fine and im prisonment. 
(7) Any person who commits an offence orunlawful act forwmch no 
specific penalty has been specified shall be liable to a fine of not less than 
P2 000.00 but not more than P5 000,00 or to imprisonment for a term of 
not less than six months but not more than two years, or to both such fine 
and imprisonment. 
71. A person who i5 aggrieved by any decision of fue Registrar under 
thls Act may appeal to the Ministerin fue manner prescribed, and within 
the time prescribed, and, ifhe i5 aggrieved by a decision ofthe Minister, 
may, within such time as may be prescribed, appeal to the High Court 
against that decision. iP/N/l/BWA/ill 
Page 30 
Reguiations 
Repeal 
Saving!! 
Transitional 78. The Minister may, by statutory instrument, make regulations 
providing for any matter wmch is to be provided for under mis Act, or 
which otherwise relates to the adrninistration of this Act. 
79. The Patents and Designs Protection Act, the Trademarks Act and 
the United Kingdom Trade Marks Act, arehereby repealed. 
80 .. A1l subsidiary legislation made under any of the enactments 
repealed by this Act and in force irnmediately prior to the coming into 
operation of this Act shall, so far as it is not inconsistent with the 
provisions of this Act, continue in force as if made under this Act. 
81. (1) Notwithstanding the repeal of the enactments referred to in 
section 80, patents granted, and designs and trade marks registered there­
under shall remain in force but shall, subject lO subsections (2) and (3), 
be deemed to have been granted under this Act. 
(2) Patents thus granted and industrial designs thus registered shall 
remain force for the unexpired portion of the period of protection 
provided thereunder subject, respectively, lO the payment of annual 
maintenance fees or renewal fees provided for under this Act. 
(3) Trademarks thus registered shall be due for renewal within the 
same period as under Part 1 of the Trade Marks Act and the United 
Kingdom Trade Marks Act, or ten years from the entry into force of this 
Act, wruchever period expires first, and, upon renewal, shall be 
reclassified in accordance with the Intemational Oassification. 
(4) A person who, on the date of entry into force ofthis Act-
(a) is the owner of a patent granted in the United Kingdom or has 
filed an application for the grant of a paten! the United 
Kingdom; or 
(b) is the owner of an industrial design registered in the United 
Kingdom or has filed an application for registration of an 
industrial design in the United Kingdom 
may, within 12 monfus of the entry into force of this Act, file an 
application for the grant of a patent for the same invention or for 
the registration of the Same industrial design under this Act and such 
application shall be accorded fue m.ing date or priority date accorded 
to the application. grant or registration in fue United Kingdom. FIRST SCHEDULE 
Official English Text established 
under Anide 29 (1) (b) 
P ARIS CONVENTION 
FOR THE PROTECTION OF INDUSTRIAL PROPERTY 
of March 20, 1883, 
as revised IPlNllIBWA/fll 
Page 31 
at BRUSSELS on December 14, 1900, at WASHINGTON on June 2, 1911, 
at THE HAGUE on November 6, 1925, at LONDON on June 2, 1934, 
at LISBON on October 31, 1958, 
and at STOCKHOLM on July 14, 1967, 
and as amended on September 28, 1979 
Artide 1 
[Establishment ofthe Uníon; Scope ofIndustrial Property]l) 
(1) The countries to which this Convemion applies constitute a Uníon for the protection of 
industrial property. 
(2) The protection of industrial property has as its object patents, utility models, industrial 
designs, trademarks, service marks, trade names, indications of source or appellations of 
origion, and the repression of unfair competition. 
(3) Industrial property shaU be understood in the broadest sense and shall apply not only 
to industry and commerce proper, but likewise to agricultural and extractive industries and to 
all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, 
minerals, mineral waters, beer, flowers, and flour. 
(4) Patents shal1 include the vanous kinds of industrial patents recognized by the laws of 
the countries of the Uníon, such as patents of importation, patents of improvement, patents and 
certifictes of addition, etc. . 
Anide 2 
[National Treatmentfor Nationals ofCountries ofthe Un ion] 
(1) Nationals of any country of the Uníon shall, as regards the protection of industrial 
property, enjoy in aH the omer countries of the Uníon the advantages that their respective laws 
now gram, or may hereafter grant, lo nationals; aH without prejudice to me rights specially 
provided for by this Convention. Consequemly, they shall have the same protection as the 
latter, and the, same legal remedy against any infringemem of their rights, provided that the 
conditions and formalities imposed upon nationals are complied with. 
(2) However, no requiremem as to domicile or establishment in me country where protec­
tion is claimed may be imposed upon nationals of countries of the Union for me enjoyment of 
any industrial property rights. 
(3) The provisio'ns of the laws of each of the countries of the Union relating to judicial and 
administrative procedure and lO jurisdiction, and to the designation of an address for senrice 
or the appointment of an agent, which may be required by the laws on industrial property are 
expressly reserved. IPIN/l/BWAII/l 
Page 32 
Artide 3 
[Same Treatment jor Certain Categories oj Persons as jor 
Nationals ojCountries ojthe Un ion] 
Nationals of countries outside the Union who are domiciled or who have real and effective 
industrial or commercial establishments in fue territory of one of fue counmes of fue Union 
shall be treated in fue same manner as nationals of fue countries of fue Union. 
Anide 4 
[A te 1. Patents, Utility Models, Industrial Designs, Marks, Inventors' Certificiates: 
Right of Priority. -G. Patents: Division of fue Application] 
A. -(1) Any person who has duly filed an application for a patent, or for the registration 
of a utility model, or of an industrial design, or of a trademark, in one of fue countries of the 
Union, or his successor in title, shall enjoy, for fue purpose of filing in fue ofuer countries, a 
right of priority during fue periods hereinafter fixed. 
(2) Any filing that is equivalem to a regular national filing under the domes tic legislation 
of any country of the Uníon or under bilateral or multilateral treaties concluded between 
countries of the Union shall be recognized as giving rise te the right of priority. 
(3) By a regular national filing is meant any filing that is adequate to establish fue date on 
which fue application was filed in the country concerned, whatever may be the subsequent fate 
of the application. 
B. -Consequently, any subsequent filing in any of the other countries of the Uníon before 
the expiration of the periods referred to aboye shall not be invalidated by reason of any acts 
accomplished in the interval, in particular, another filing, the publication or exploitation of the 
invention, the putting on sale of copies of the design, or fue use of the mark, and such acts 
cannot give rise to any third-party right or any right of personal possession. Rights acquired 
by third parties before the date of fue first application that serves as the basis for the right of 
priority are reserved in accordance with the domestic legislation of each country of the Uníon. 
C. -(1) The periods of priority referred to aboye shall be twelve monfus for patents and 
utility models, and six months for industrial designs and trademarks. 
(2) These periods shall start from the date of filing of the first application; the day of filing 
shall not be included in the periodo 
(3) If the last day of fue period is an official holiday, or a day when fue Office is not open 
for fue filing of applications in the country where protection is c1aimed, fue period shall be 
extended until fue frrst following working day. 
(4) A subsequent application concerning the same subject as a previous first application 
within the meaning ofparagraph (2), aboye, filed in the same country of fue Uníon, shall be 
considered as the first application, of which the filing date shall be me starting point of the 
periad of priority. if, at the time of filing me subsequent application, fue said previous 
application has been withdrawn, abandoned, or refused, without having been laid open te 
public inspection and without leaving any rights outstanding, and if it has not yet served as a 
basis for claiming a right of priority. The previous application may not thereafter serve as a 
basis fo! claiming a right of priority. 
D. -(1) Any person desiring lO take advantage of the priority of a previous filing shall be 
required te malee a dedaration indicating the date of such filing and the country in which it was 
madlé. Each country sha11 determine the latest date on which such declaration must be made. 
(2) These particulars shall be mentioned in the publications issued by fue competent 
authority. and in particular in the patents and me specifications relating thereto. íPIN/lIBWAIIII 
Page 33 
(3) The countnes of the Union may require any person making a declaration of priority to 
produce a copy of the application (description, drawings, etc.) previously filed. The copy, 
certified as correct by the authority which received such application, shall not require any 
authentication, and may in any case be fi1ed, without fee, al any time within three months of 
the filing of the subsequent application. They may require it lO be accompanied by a certificate 
from the same authority showing the date of filing, and by a translation. 
(4) No other formalities may be required for the declaration ofpriority at the time of filing 
the application. Each country of the Uníon shaH determine the consequences of failure i.O 
comply with the formalities prescribed by this Article, but such consequences shall in no case 
go beyond the 10ss of the right of priority. 
(5) Subsequently, further proof may be required. 
Any person who avails himself of the priority of a previous application shall be required i.O 
specify the number of that application; this number shall be published as provided for by 
paragraph (2), aboye. 
E. -(1) Where an industrial design is filed in a country by virtue of a right of priority 
based on the filing of a utility model, the period of priority shaH be the same as that fixed for 
industrial designs. 
(2) Furthermore, it is permissible i.O file a utility model in a country by virtue of a right of 
priority based on the filing of a patent application, and vice versa. 
F. -No country of the Uníon may refuse a priority or a patent application on the ground 
that the applicant claims multiple priorities, even if they originate in different cOI.mtries, or on 
the ground that an application claiming one or more priorities contains one or more elements 
that were not included in the application or applications whose priority is claimed, provided 
that, in both cases, there is unity of invention within the meaning of the law of the country. 
With respect to the elements not included in the application or applications whose priority 
is claimed, the filing of the subsequent application shall give rise te a right of priority under 
ordinary conditions. 
G. -(1) If the examination reveals that an application for a patent contains more than one 
invention, the applicant may divide the application into a certain number of divisional 
applications and preserve as the date of each the date of the initial application and the benefit 
of the right of priority, if any. 
(2) The applicam may also, on his own initiaüve, divide a patent application and preserve 
as the date of each divisional application the date of the initial application and the benefit of 
the right of priority, if any. Each country of the Uníon shall have the right to determine the 
conditions under which such division shall be authorized. 
H. -Priority may not be refused on the ground that certain elements of the invention for 
which priority is c1aimed do not appear among the c1aims formulated in the application in the 
country of origin, provided that the application documents as a whole specifically disdose 
such elements. 
1. -(1) Applications for inventors' certificates filed in a country in which applicants have 
the right to apply al their own option either for a parent or for 3n inventor' s certificate shall 
give rise to the right of priority provided for by this Article, under the same conditions and with 
the same effects as applications for patents. 
(2) In a country in which applicants have the right to apply al their own option either for 
a patent or for an inventor's certificate, an applicant for an inventor's certificate shall, in 
accordance with the provisions of this Article relating to patent applications, enjoya right of 
priority based on an application for a patent. a utility model. or an inventor's certificate. ¡ P/N/lIBW AII/l 
Page 34 
[Patents: Independence of Patents Obtained for the Same Invention 
in Different Cmmtries] 
(1) Patents applied for in the vanous countries ofthe Union by nationals of countries ofthe 
Union shall be independent of patents obtained for the same invention in other countries, 
whether members of the Union or nol 
(2) The foregoing provision is lo be understood in an unrestricted sense, in particular, in the 
sense that patents applied for during the period of priority are independent, both as regards the 
grounds for nuHity and forfeiture, and as regarqs their normal duration. 
(3) The provision shall apply to a11 patents existing at the time when it comes into effect. 
(4) Similarly, it shaU apply, in the case of the accession of new countries, lo patents in 
existence on either side at the time of accession. 
(5) Patems obtained with the benefitof priority shall, in the vanous countries ofthe Union, 
have a duration equal to that which they would have, had they been applied for or granted 
without the benefit of priority. 
Artide 4ter 
[Patents: Mention of the Inventor in the Patent] 
The inventor shaU have the right to be mentioned as such in the patento 
Artide 4qua.rt.er 
[Patents: Patentability in Case of Restrictions of Sale by Law] 
The grant of a patent shall not be refused and a patent shall nOl be invalidated on the ground 
that the sale of the patented product or of a product obtained by means of a patented process 
is subject to restrictions Oí limitations resulting from the domestic law. 
Article 5 
[A. Patents: Importation of Anides; Failure to Work or Insufficient Working; Compulsory 
Licenses. -B. Industrial Designs: Failure to Work; Importation of Anides. -C. Marks: 
Failure to Use; Different Forms; Use by Co-proprietors. -D. Patents, Utility Models, 
Marks, Industrial Designs: Marking] 
A. -(1) Importation by the patentee into the country where the patent has been granted 
of artieles manufactured in any of the countries of the UnÍon shall not entail forfeiture of the 
patento 
(2) Each country of the Union shall have the right to take legislative measures providing 
for me grant of compulsory licenses to prevent the abuses which mig h t result from the exercise 
of the exclusive rights conferred by the patent, for example, failure to work. 
(3) ForfeÍture of the patent shall not be provided for except in cases where the grant of 
compulsory licenses would not have been sufficient to prevent the said abuses. No proceedings 
for me forfeiture or revocaüon of a patent may be instituted before the expiration of two years 
from me grant of me frrst compulsory lícense. IPINIl/BW AII/I 
Page 35 
(4) A compulsory license may not be applied for on the ground of failure to work or 
insufficient working before the expiraríon of a period of four years from the date of filing of 
me patent application or three years from the date of the gram of the patent, whichever period 
expires last; it shall be refused if the patemee justifies his inaction by legitimate reasons. S uch 
a compulsory license shall be non-exclusive and shall nm be transferable, even in the form of 
the grant of a sub-license, except with that part of the enterprise or goodwill which exploits 
such license. 
(5) The foregoing provisions shalI be applicable, mutatis mutandis, te utility models. 
B. -The protection of industrial designs shall not, under any circumstance, be subject te 
any forfeiture, either by reason of failure te work or by reason of the importation of articles 
corresponding to those which are protected. 
C. -(1) If. in any country, use of the registered mark is compulsory, the registration may 
be cancelled only after a reasonable period, and then only if the person concerned does nm 
justify his inaction. 
(2) Use of a trademark by the proprietor in a form differing in elements which do not alter 
the distinctive character of the mark in the form in which ir was registered in one of the 
countries of the Uníon shall not entail invalidation of the registration and shall not diminish 
the protection granted to the mark. 
(3) Concurrent use of the same mark on identical or similar goods by industrial or 
commerical establishmems considered as co-proprietors of the mark according to me 
provisions of the domes tic law of the country where protection is claimed shall not prevem 
registration or diminish in any way the protection granted to the said mark in any country of 
the Uníon, provided that such use does not result in misleading the publíc and is not contrary 
to the public interest 
D. -No indication or mentíon of the patent, of the utility model, of the registration of the 
trademark, or of the deposit of the industrial design, shall be required upon the goods as a 
condition of recognition of the right to protection. 
[All Industrial Property Rights: Period of Grace for the Payment of Fees for the 
Maintenance of Rights; Patents: Restoration] 
(1) A period of grace of not less than six months shall be al10wed for me payment of the 
fees prescribed for me maintenance of industrial property rights, subject, if the domestic 
legislation so provides, to the payment of a surcharge. 
(2) The countries of the Union shall have the right to provide for the restoration of patents 
which have lapsed by reason of non-payment of [ees. 
Article 5ter 
[Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles] 
In any country of the Union the following shall not be considered as infringemcms of me 
rights of a patentee: 
1. the use on board vessels of other countries of the Uníon of devices forming the subject 
of his patent in the body of the vessel, in the machinery, tackle, gea.r and other 
accessories, when such vessels temporarily or accidentaUy enter the waters of the said 
country, provided that such devices are used there exclusively for the needs of the 
vessel; lP!NIl/BWAIlI¡ 
Page 36 
2. the use of devices forming the subject of the patent in the construction or operation 
of aircraft or land vehicles of other countries of me Union, or of accessories of such 
aircraft or land vehicles, when those aircraft or land vehicles tempoI'arily or acciden­
taUy enter the said country. 
Article 5quater 
[Patents: Importation ofProducts Manufactured by a Process Patented 
in me Importing Country] 
When a product is imported into a country of me Uníon where there exists a patent 
protecting a process of manufacture of me said prodúct, the patentee shall have aH the rights, 
wim regard to me imported product, that are accorded to him by the legislation of the country 
of importation, on the basis of me process patent, wim respect to products manufacrured in that 
country. 
Article 5quinquics 
(lndustrial Designs] 
Industrial designs shall be protected a11 the countries of the Union. 
Article 6 
[Marks: Conditions ofRegistration; Independence ofProtection of Same Mark in Different 
Countries] 
(1) The conditions for the filing and registration of trademarks shall be determined in each 
country of the Uníon by its domestic legislation. 
(2) However, an application for me registration of a mark filed by a national of a country 
of the Union in any country of the Uníon may not be refused, nor maya registration be 
invaHdated, on me ground that filing, registration, or renewal, has not been effected in the 
country of origine 
(3) A mark duly registered in a country of me Uníon shall be regarded as independent of 
marks registered in the other countries of the Union, including the country of origino 
Article 6bis 
[Marks: Well-Known Marks] 
(1) The countries ofthe Uníon undertake, ex officio if their legislation so permits, oI' at the 
request of an inteI'ested party, to refuse or to cancel the registration, and to prohibit the use, 
of a trademark which constitutes a reproduction, an imitation, oI' a translation, hable to create 
confusion, of a mark considered by the competent authority of the country of registration or 
use to be well known in that country as being already me mark of a person entitled to me 
benefits of this Convention and used for identical or similar goods. These provisions shaH also 
apply when me essential part of the mark constitutes a I'eproduction of any such well-known 
mark or an imitation liable to crea te confusion theI'ewith. 
(2) A perlod of at least five years fmm me date of I'egistration shall be allowed for 
requesting the canceBation of such a mark. The countries of the Union may provide for a 
period within which the prohibition of use must be requested. 
(3) No time limit shall be fixed for I'equesting the cancellation oI' the prohibition of me use 
of marks registered or used in bad faith. Article 6ter IPlNll/BWAIIIl 
Page 37 
[Marks: Prohibitions conceming State Emblems, Official Hallmarks, and 
Emblems of Imergovemmental Organizations] 
(1) (a) The countries of me Union agree to refuse or to invalidate the registration, and to 
prohibit by appropriate measures me use, wimout aumorization by me competent authorities, 
eimer as trademarks or as elemems oftrademarks, of armorial bearings, flags, and other S tate 
emblems, of me countries of the Uníon, official signs and hallmarks indicating control and 
warranty adopted by them, and any imitation from a heraldic point of view. 
(b) The provisions of sub-paragraph (a), aboye, shaU apply equally to armorial bearings, 
flags, omer emblems, abbreviations, and names, of intemational intergovemmental organiza­
tions of whieh one or more eountries of me Union are members, with the exception of armorial 
bearings, flags, other emblems, abbreviations, and names, mat are already the subject of 
imemational agreements in force, intended te ensure their protection. 
(e) No country ofme Uníon shall be required te apply the provisions ofsub-paragraph (b), 
aboye, to me prejudiee of me owners of rights acquired in good faith before the entry imo force, 
in mat country, of this Convention. The countries of me Union shall not be required to apply 
me said provisions when the use or registration referred to in sub-paragraph (a), aboye, is not 
of such a nature as to suggest to the pubEe that a connection exists between me organization 
concemed and the armorial bearings, flags, emblems, abbreviations, and names, or if such use 
or registration is probably not of such a nature as to mislead the pubEc as to me existence of 
a connection between me user and the organization. 
(2) Prohibition of me use of official signs and hallmarks indicating control and warramy 
shall apply solely in cases where me marks in which they are incorporated are intended to be 
used on goods of me same or a similar kind. 
(3) (a) For the application of these provisions, the countries of me Union agree to 
communicate reciprocaUy, through the intermediary of the Intemational Bureau, me list of 
S tate emblems, and official signs and haUmarks indicating control and warranty, which mey 
desue, or may hereafter desue, te place wholly or within certain limits under the protection 
of this Anide, and all subsequent modifications of such liSL Each country of the Union shall 
in due course make available to the public me lists so communicated. 
Nevertheless such communication is not obIigatory in respect of flag s of S tates. 
(b) The provisions of sub-paragraph (1) of paragrapph (1) mis Artide shall apply only to 
such armorial bearings, flags, other emblems, abbreviations, and names, of international inter­
governmental organizations as the latter have communicated to the countries of me Uníon 
through the intermediary of the Intemational Bureau. 
(4) Any country ofthe Uníon may, within a period oftwel ve months from the recei pt of me 
notification, transmit its objections, if any, through me intermediary of the Intcmational 
Bureau, to the country or intemational intergovemmental organization concemed. 
(5) In me case of S tate flags, me measures prescribed by paragraph (1), aboye, shall apply 
solely to marks registered aiter November 6, 1925. 
(6) In me case of S tate emblems other than flags, and of official signs and hallmarks of lhe 
countries of the Union, and in me case of armorial bearings. flags, omer emblems, abbrevia­
tions, and names, of intemational intergovemmental organizations, mese provisions shaU 
apply only to marks registered more than two monms after receipt of the 'Communication 
provided for in paragraph (3), aboye. 
(7) In cases of bad faith, the countries shall have me right to cancel even mose marks 
incorporating State emblems, signs and haHmarks, which were registered before November 
6, 1925. IPIN/l/BWA/I/l 
Page 38 
(8) Nationals of any C01.:mtry who are authorized to make use of the State emblems, signs, 
and hallmarks, of their country may use them even if they are similar to those of another 
country. 
(9) The countries of the Union undertake to prohibit the unauthorized use in trade of the 
State armorial bearings of the other countries of the Uníon, when the use is of such a nature 
as to be misleading as to the origin of the goods. . 
(10) The aboye provisions shall not prevent the countries from exercising the right given 
in paragraph (3) of Article 6quinquics, Section B, to refuse or to invalidate the registration of 
marks incorporating, without authorization, armorial bearings, flags, other S tate emblems, or 
official signs and hallmarks adopted by a country of the Uníon, as weH as the distinctive signs 
of international intergovernmental organizations referred to in paragraph (1), aboye. 
Article 6qu.artet 
[Marks: Assignment of Marks) 
(1) When, in accordance with the law of a country of the Uníon, the assignment of a mark 
is valid only if it takes place at the same time as the transfer of the business or goodwill to which 
the mark belongs, it shall suffice for the recognition of such validity that the portion of the 
business or goodwiH located in that country be transferred to the assignee, together with the 
exclusive right ro manufacture in the said country, or to seU therein, the goods bearing the mark 
assigned. 
(2) The foregoing provision does not impose upon the countnes ofthe Uníon any obligation 
to regard as valid the assignment of any mark the use of which by the assignee would, in fact, 
be of such a nature as to mislead the public, particularly as regards the origin, nature, or 
essential qualities, of the goods to which the mark is applied. 
Article 6quinquíes 
[Marks: Protection of Marks Registered in One Country of the Uníon 
in the Other Countnes of the Uníon] 
A. -(1) Every trademark duly registered in the country of origin shall be accepted for 
filing and protected as is in the other countries of the Uníon, subject 10 the reservations 
indicated in this Artiele. Such countries may, before proceeding to final registration, require 
the production of a certificate of registration in the country of origin, issued by the competent 
authority. No authentication shall be required for this certificate. 
(2) Shall be considered the country of origin the country of the Uníon where the aplicant 
has a real andeffective industrial or commerical establishment, or, if he has no such 
establishment within the Uníon, the country of the Uníon where he has his domicile, or, if he 
has no domicile within the Uníon but is a national of a country of the Union, the country of 
which he is a national. 
B. -Trademarks covered by this Artiele may be neither denied registration nor invalidated 
except in the foHowing cases: 
1. when they are of such a nature as to infringe rights acquired by third parties in the 
country where protection is elaimed; 
2. when they are devoid of any distinctive character, or consist exclusively of signs or 
indications which may serve, in trade, 10 designate the kind, quality, quantity, in tended 
purpose, value, place of origin, of the goods, or the time of production, or have become 
customary in the current language or in the bona fide and established practices of the 
trade of the country where protection is elaimed; 
3. when they are contrary to morality or public order and, in particular, of such a nature 
as to deceive the publico It is understood. that a mark may not be considered contrary 
to public order for the sole reason that it does not conform to a provision of the 
legislation on marks, except if such provision itself relates to Bublic order. 
This provision is subject, however, 10 the application of Amele 10 Íli. IPIN/lIBWA/IIl 
Page 39 
c. -(1) -In determining whether a mark is eligible for protection, all the factual 
circumstances must be taken into consideration, particularly the length of time the mark has 
been in use. 
(2) No trademark shaU be refused in the othercountries ofthe Union for the solereason that 
it differs from the mark protected in the coumry of origin only in respect of elements that do 
not alter its distinctive character and do not affect its identity in the form in which it has been 
registered in the said country of origino 
D. -No person may benefit from me provisions of this Anide if the mark for which he 
c1aíms protection is not registered in the country of origino 
E. -However, in no case shall the renewal of the registration of the mark in the country 
of origin involve an obligation to renew the registration in the other countries of the Union in 
which me mark has been registered. 
F. -The benefit of priority shall rema in unaffected for applications for me registration of 
marks filed within the period fixed by Artide 4, even if registratíon in the country of origin 
is effected after the expiration of such periodo 
Anide 6sexies 
[Marks: Service Marks] 
The coumries of the U nion undertake to protect service marks. They shaU no! be required 
to provide for the registration of such marks. 
Anicle 6sep¡ieo 
[Marks: Registration in the Name of the Agem or Representative of the 
Proprietor Without me Latter's Authorization] 
(1) If the agent or representative of the person who is me proprietor of a mark in one of me 
countries of the Uníon applies, without such proprietor's aumorization, for the registration of 
me mark in his own name, in one or more eountries ofthe Uníon, the proprietor shaH be entitled 
to oppose the registration applied for or demand its caneel1ation or, if the law of me cmmtry 
so aHows, the assignmem in his favor of the said registration, unless such agent or represen­
tative justifies his acrion. 
(2) The proprietor of me mark shaH, subject to the provisions of paragraph (1), aboye, be 
entitled to oppose the use of his mark by his agent or representative if he has not authorized 
such use. 
(3) Domestic legislation may provide an equitable time limit within which the proprietor 
of a mark must exercise me rights provided for in this Amele. 
Artide 7 
[Marks: Nature of the Goods to which fue Mark is Applied] 
The nature of the goods to which a trademark is to be applied shaU in no case form an 
obstade lO me registration of fue mark. 
Article 7biB 
[Marks: Collective Marks) 
(1) Thecountries ofthe Uníon undertake to aceeptfor filing and toprotectcollective marks 
belonging to associations me existence of which is not contrary to me law of the country of 
origino even if such associations do not possess an industrial or commercial establishment 
(2) Each country shall be the judge of me particular conditions under which a coUective 
mark shall be the judge of the particular conditions under which a coHective mark shall be 
protected and may refuse protection if me mark is contrary to the public interest IPIN/lIBWA/I/l 
Page 40 
(3) Nevertheless, the protection of these marks shaU not be refused to any association the 
existence of which is not contrary to the law of the country of origin, on the ground that such 
association is not established in the country where protection is sought or is not constituted 
according to the law of the latter country. 
Artide 8 
[Trade Names] 
A trade name shaH be protected in aH the countries ofthe Uníon without the obligation of filing 
DI' registrar ion, whether oI' not it forms parí of a trademaI'k. 
Artide 9 
[Marks: Trade Names: Seizure, on Importation, etc., of Goods Unlawfully 
Bearing a Mark or Trade Name] 
(1) AH goods unlawfully bearing a trademark or trade name shaH be seized on importation 
into those countries of the Uníon where such mark or trade name is entitled to legal protection. 
(2) Seizure shaH likewise be effected in the country where the unlawful affixation occuHed oI' 
in the country inío which the goods weI'e imported. 
(3) Seizure shall take place at the request of the public prosecutor, or any other competent 
authority, or any interested party, whether a natural person or a legal entíty, in eonformity with 
the domestic legislation of each country. 
(4) The authorities shaH not be bound to effect seizure of goods in transit. 
(5) If the legislation of a countl"y does not permit seizure on importation, seizure shall be 
replaced by prohibition of importation or by seizure inside the country. 
(6) If the legislation of a country permits neither seizure on importation nor prohibition of 
importation nor seizure inside the country, then, until such time as the legislation is modified 
accordingly, these measures shall be l"eplaced by the actions and remedies available in su eh cases 
to nationals under the law of such country. 
Artide 10 
[False lndications: Seizure, on Importation, etc., of Goods Bearing False lndications as to 
their Source OI the Identity of the Producer] 
(1) The provisions of the preceding Artic1e shall apply in cases of direct or indirect use of a 
false indication of the source of the goods Oi the identity of the producer, manufacturer, Oí 
merchant. 
(2) Any producer, manufacturer, or merchant, whether a natural person or a legal entity, 
engaged in the produetion Oí manufacture of ol" trade in such goods and established eithel" in the 
locality falsely indicated as the source, Oí in the regíon where su eh locality is situated, or in the 
country falsely indicated, Oí in the country where the false indication of source is used, shall in 
any case be deemed an interested party. 
Ariide 10bis 
[Unfair Competition) 
(1) The countl"ies of the Uníon are bound to assure to nationals of such countries effective 
protection against unfair competition. lP1N1IIBWAIJI1 
Page 41 
(2) Any act of competition contrary to honest practices in industrial or commercial matters 
constitutes an act of unfair competition. 
(3) The following in particular shall be prohibited: 
1. all acts of such a nature as to create confusion by any means whatever with the establishment, 
the goods, or the industrial or commercial activities, of a competitor; 
2. false allegations in the course of trade of such a nature as to discredit the establishment, the 
goods, or the industrial or commercial activities, of a compelitor; 
3. indications or allegations the use of which in the course of trade is liable to mislead the public 
as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, 
or the quantity, of the goods. 
Anide lOte! 
[Marks, Trade Names, False lndications, Unfair Competition: Remedies, Right to Sue] 
(1) The countries ofthe Uníon undertak~ to assure to nationals of the other countries ofthe Uníon 
appropriate legal remedies effectively to repress al! the acts referred to in Mides 9, 10, and l()bis. 
(2) They undertake, further, to provide measures to permit federations and associations 
representing interested industrialists, producen;, or merchants, pnwided that the existence of such 
federations and associations is no! contrary to the laws of their countries, to take.action in the courts 
or before the adminístrative authorities, with a view to the repression of the acts referred to in 
Artides 9,10, and 10bi., inso far as thelaw ofthecountry in which proteetionis c1aimed allowssuch 
action by federations and associations of that country. 
Article 11 
[Inventions, Utility Models, Industrial Designs, Marks; Temporary Pmtection at Certain 
International Exhibitions] 
(1) The countries of the Uníon shaH, in eonformity with their domestÍC legislation, grant 
temporary protection to patentable inventions, utility models, industrial designs, and trademarks, 
in respect of goods exhibited at official or officially reeognízed international exhibitions held in the 
territory of any of them. 
(2) Su eh temporary protection shall no! extend the periods provided by Mide 4. If, later, the 
right of priority is invoked, the authorities of any eountry may provide tha! the period shaH start fmm 
the date of introduction of the goods into the exhibition. 
(3) Each country may require, as proof of the identity of the artide exhibited and of the date of 
its introduction, such documentary evidence as it considers necessary. 
Article 12 
[Special National Industrial Property Services] 
(1) Each eountry ofthe Uníon undertakes to establish a special industrial property service and 
a central office for the eommunication to the public of pateat5, utility models, industrial designs, 
and trademarks. 
(2) 'Ibis servke shaU publish an official periodical joumal. It shall publish regularly: 
(a) the names of the proprietors of patents granted., with a brief designation of the inventions 
paten1ed; 
(b) the reproductions of registered trademarks. IPIN/l /BW AIl/1 
Page 42 
Anide 13 
[Assembly of the Uruon] 
(1) (a) The Uruon shall have an Assembly consisting ofthose counirles of the Uruon wruch are 
bound by Artides 13 to 17. 
(b) The Govemment of each country shall be represented by one delegate, w ho may be assisted 
by aHernate delegates, advisors, and experts. 
(e) The expenses of each delegation shaH be bome by the Govemment wruch has appointed it. 
(2) (a) The Assembly shall: 
(i) deal with all matters concerrung the maintenance and development of the Uruon and the 
implementation of trus ConV'ention; 
(ii) give directions conceming ¡he preparation fOí conferences of revision to the lntema­
!ional Bureau of lntellectual Property (hereinafter designated as "the Intemational 
Bureau") refened to in the Convention establishing the World Intellectual Property 
Organization (hereinafter designated as "the Orgaruzation"), due account being taken of 
any comments made by those countries of the Uruon wruch are not bound by Artieles 
13to 17; 
(iii) review and approve the reports and activities of the Director General of the Orgaruzation 
concerrung the U ruon, and give rum aH necessary instructions coneerrung matters witrun 
the competence of the U ruon; 
(iv) elec! the members of the Executive Committee of the Assembly; 
(v) review and approve the reports and activities of its Executive Committee, and give 
instructions to sueh Committee; . 
(vi) determine the program and adopt the biennial budget ofthe Union, and approve its final 
accounts; 
(vii) adopt the financial regulations of the Union; 
(viii) establish such eommittees of experts and working groups as it deems appropriate to 
acrueve the objectives of the Union; 
(ix) determine wruch countries no! members ofthe Union and wruch intergovemmental and 
intemational non-govemmental organizations shall be admitted to its meetings as 
observers; 
(x) adopt amendments to Artieles 13 to 17; 
(xi) take any other appropriate action designed to further the objectives of the Union; 
(xii) perform sueh other funetions as are appropriate under trus Convention; 
(xiii) subject to its aeeeptance, exercise such rights as are given to it in the Convention 
establisrung the Orgaruzation. 
(b) With respect to matters wruch are of ¡nleTest aIso to other Unions administered by the 
Organization, the Assembly shall make its decisions after havíng heard the advice of the 
Coordínation Committee of the Organization. 
(3) (a) Subjeet to the provisions of subparagraph (b), a delegate mal' represent one eountry only. 
(b) Countríes ofthe Union grouped under the terms of a speeial agreement in a eommon office 
possessing for each of íhem the character of a special national service of industrial property a..,; 
referred to in Artide 12 mal' be jointly represented durlng diseussions by ooe of their number. 
(4) (a) Each country member of the Assembly shall have one vote. 
(b) One-half of the countries members of the Assembly shall con.."titute a quorum. 
(e) Notwithstanding the provisions of subparagraph (b), if, in any session, the number of 
countries represented is less than one-half but egual to Oí more than one-trurd of the countries 
members ofthe Assembly, the Assembly may make decisions bu!, with the exception of deeisions 
concerrung its own procedure, al! such deeisions shall take effect oruy if the cooditions set forth 
hereinafter are fulfilled. The lntemational Bureau shall communicate the said decisions to the IPIN/I/BWA/1I1 
Puge 43 
countnes members of the Assembly which were no! represented and shal1 invite them to express 
in writing their vote or abstention within a penod ofthree months from the date ofthe communí­
cation. n, at the expiration of trus period, the number of countries having thus expressed their vote 
or abstention attains the number of countries wruch was lacking for attainíng the quorum in the 
session itse1f, such decisions shall take effect provided that at the same time the required majority 
still obtains. 
(ti) Subject to the provisions of Artieles 17 (2), the decisions of the Assembly shall require two­
trurds of the votes cast. 
(e) Abstentions shaH noí be considered as votes. 
(5) (a) Subject to the provisions of subparagraph (b), a delegate may vote in the name of one 
country only. 
(b) The countries ofthe Uníon referred to in paragraph (3) (b) shall, as a general rule, endeavor 
to send their own delegations to the sessions ofthe Assembly. If, however, for exceptional reasons, 
any such country cannot send its own delegation, it may give to the de1egation of another such 
country the power to vote in its name, provided that each delegation may vote by proxy for one 
country only. Such power to vote shall be granted in a document signed by the Head of State or the 
competen! Miníster. 
(6) CountrÍes of the Union no! members of the Assembly shall be admitted to the meetings of 
the latter as observers. 
(7) (a) The Assembly shaH meet once in every second calendar year in ordinary session upon 
convpeation by the Director General and, in the absence of exceptional cireumstanees, during the 
same penod and at the same place as the General Assembly of the Organízation. 
eb) The Assembl y shall meet in extraordinary session upon convocation by the Director General, 
al the request ofthe Executive Committee or at the request of one-fourth ofthe countries rnembers 
ofthe Assembly. 
(8) The Assembly shall adopt its own rules of procedure. 
Artide 14 
[Executive Committee] 
(1) The Assembly shall have an Executive Committee. 
(2) (a)TheExecutiveCommitteeshallconsistofcountrieselectedbytheAssembly fromamong 
countries members of the Assembly. Furthermore, the eountry on w hose ten itory the Organization 
has it5 headquarters shaH, subject to the provisions of Mide 16 (7) (b), have an ex officio seat on 
the Committee. 
(h) The Govemment of ea eh country member of the Executive Committee shall be repre5ented 
by one delegate, who may be assisted by alternate delegates, advisOís, and experts. 
(e) The expe11.<;es of each delegation shall be borne by the Govemment wruch has appointed it. 
(3) The number of countries members of the Executive CommiUee shall correspond to one­
fourth of the number of countnes members of the Assembl y. establisrung the number of seats to 
be fiHed, remainders after division by four shall be disregarded. 
(4) In electing the members ofthe Executive committee, the Assembly shall have due regard to 
an equitable geograprucal distribution and to the need for countries party to the Special Agreements 
established in relation with the Union to be among the countries constituting the Executive 
Committee. 
(5) (a) Each member of the Executive CommiHee shaH serve from the dose of the session of the 
Assembly wruch elected it to the dose of the next OFffinary session of the Assembly. 
(b) Members of the Executive Cornmittee may be re-elected, but only up to a maximurn of two­
trurds of such members. IPIN/1/BW AlIli 
Page 44 
(e) The Assembly shaH establish the details ofthe rules governing the election and possible rc­
election of the members of the Executive Committee. 
(6) (a) The Executive Committee shall: 
(i) prepare the draft agenda of the Assembly; 
(ií) submit proposals to the Assembly in respect of the draft program and biennial budget of 
the Union prepared by the Director General; 
(iii) [deleled] 
(iv) submít, with appropriate comments, to the Assembly the periodical reports of the 
Director General and the yearly audit reports on the accounts; 
(v) tajee aH necessary measures to ensure the execution ofthe program ofthe Union by ¡he 
Director General, in accordance with the deCÍsions of the Assembly and having regard 
io circumstances arising between'two ordinary sessionsof the Assembly; 
(vi) perform such other functions as are allocated io it under ihis Convention. 
(b) \Vith respect to matters which are of inieres! also io other Unions administered by the 
Organization, the Executive Committee shall make its decisions after having heard the advice of 
the Coordination Committee of the Organization. 
(7) (a) The Executive Committee shaB meet once a year in ordinary session upon convocation 
by the Director General, preferabl y during the same period and at the same place as the Coordination 
Committee of the Organization. 
(b) The Executive Committee shaH meeí in extraordinary se...;;sion upon convocation by the 
Director General, either on his own initiative, or at the request of its Chairman OI one-fourth of its 
members. 
(8) (a) Each country member of the Executive Committee shaH have one vote. 
(b) One-half of the members of the Executive Committee shall constitute a quorum. 
(e) Decisions shall be made by a simple majority of the votes cas!. 
(d) Abstentions shaH no! be considered as votes. 
(e) A delegate may represent, and vote in the name of, one country oruy. 
(9) Countries of the Union no! members of the Executive Committee shaH be admitted to its 
meetings as observers. 
(lO) The Executive Committee shall adopt its own rules of procedme. 
Artide 15 
[Intemational Bureau] 
(1) (a) Administrative tasks concerning the Union shall be performed by the Intemational 
Bureau, wruch is a continuation of the Bmeau of the U nioa united with the Bureau of the U nion 
established by the lntemational Convention for the Protection of Uterary and Artistic Works. 
(b) In particular, the Intemational Bureau shall provide the secretariat of the various organs of 
the Union. 
Ce) The Director General ofthe Organization shall be the chief executive ofthe Union and shall 
represent the Union. 
(2) The Intemational Bureau shall assemble and publish information concerning the protection 
ofindustrial property. Each country ofthe Union shall promptly communicaté to the Intemational 
Bureau aH new laws and offida! texts concerning the protection of industrial property. Furthermore, 
it shall furnish the International Bureau with all the publications of its industrial property service 
of direct concem to the protection of industrial property wruch the Intemational Bureau may find 
useful in its work. 
(3) The International Bureau shal1 pubiish a monthly periodical. 
(4) The International Bureau shall, on request, furnish any country of the U nion with information 
on matters concerning the protection of industrial property. IPINIl lB WA/IIl 
Page 45 
(5) The Intemational Bureau shall conduct studies, and shaU provide services, designed to 
fadlitate the protection of industrial property. 
(6) The Director General and any staff member designated by him shall participate, without the 
right to vote, in all meetings of the Assembly, the Executive Commíttee, and any other committee 
of experts or working group. The Director General, or a staff member designated by him, shall be 
ex officio secretary of these bodies. 
(7) (a) The Intemational Bureau shall, in accordance with the directions of the Assembly and in 
cooperation with the Executive Committee, make ¡he preparations for the conferences of revision 
of the provisions of the Convention other than Mieles 13 to 17. 
(h) The Intemational Bureau may consult with intergovemmental and intemational non­
govemmental organizations conceming preparations for conferences of revision. 
(e) The Director General and persons designated by him shaH take part, wHhout the right to vote, 
in the discussions at these conferences. 
(8) The Intemational Bureau shall carry out any other tasks assigned to it. 
Article 16 
[Finan ces] 
(1) (a) The Union shall have a budget 
(h) The budget of the Union shall include the income and expenses proper to the Union, its 
contribution to the budget of expenses common to the Unions, and, where applicable, the sum made 
available to the budget of the Conference of ¡he Organization. 
(e) Expenses no! attributable exclusively to the Union but also to one Oí more other Unions 
administered by the Organization shaH be considered as expenses common to the Unions. The share 
ofthe Union in such common expenses shaH be in proportion to the inteíest the Uníon has in them. 
(2) The budget of the Union shall be established with due íegard to the requirements of 
coordination with the budgets of the other Unions administered by the Organization. 
(3) The budget of the U nion shall be financed from the following sources; 
(i) contributions of the countries of the Union; 
Oí) fe es and charges due for services rendered by the Intemational Bureau in relation to the 
Union; 
(iii) sale of, or royalties on, the publications of the Intemational Bureau concerning the 
Union; 
(iv) gifts, bequests, and subventions; 
(v) rents, interests, and other miscellaneous income. 
(4) (a) For the purpose of establisrung its contribution towards the budget, each country of the 
Union shaH belong to a dass, and shall pay its annual contributions on the basis of a number of units 
fixed as foHows: 
Class 1. 25 
Class n. 20 
Class HI. 15 
Class IV. 10 
Class V. 5 
Class VI. .... 
.:> 
Class VII. 1 IPIN/lIBWA/I/l 
rage 46 
(b) Unless it has a!ready done so, each country shall indicate, concUfrently with depositing its 
instrument of ratification Ol' accession, the class to wruch it wishes to belong. Any country may 
change class. If it chooses a lower dass, the country must announce such change to the Assembly 
at one of its ordinary sessions. Any such change shall take effect at the beginning of the calendar 
year foHowing the said session. 
(e) The annual contribution of each country shall be an amount in the same proportion to the 
total sum to be contributed to the budget of the Uníon by all countries as the number of its uníts is 
to the total of the uníts of aH contributing countries. 
(ti) Contributions shall become due on the first of January of each year. 
(e) A country wruch is in arrears in the payment of its contributions may not exercise its right 
to vote in any of the organs of the Uníon of wruch it is a member if the amoun! of its arrears equals 
or exceeds the amount of the contributions due from it for the preceding two full years. However, 
any organ of the U níon may allow such a country to continue to exercise its right to vote in that organ 
if, and as long as, it is satisfied that the delay in payment is due to exceptional and unavoidable 
circumstances. 
(j) If the budget is not adopted before the beginning of a new financial penod, it shall be at the 
same leve! as the budget of the previous year, as provided in the financial regulations. 
(5) The amOlmt of the fees and charges due fO! services rendered by the Intemational Bureau in 
relation to the Uníon sha!l be established, and shall be reported to the Assembly and the Executive 
Cornmittee, by the Director General. 
(6) (a) The Union shall have a wO!king capital fund which shall be constituted by a single 
payrnent made by each country of the Uníon. H the fund becomes insufficient, the Assembly shal1 
decide to increase it. 
(b) The amount of the inítial payment of each country to the said fund or of its participation in 
the increase thereof shall be a proportion of the contribution of that country for the year in which 
the fund is established or the decision to increase it is made. 
(e) The proportion and the terms of payment shall be fixed by the Assembly on the proposa! of 
the Director General and afier it has heard the advice of the Coordination Committee of the 
Organization. 
(7) (a) In the headquarters agreement conduded with the country on the territo!Y of which the 
Organization has its headquarters, it shall be provided tha!, whenever the working capital fund ís 
insufficient, such country shall grant advances. The arnount ofthese advances and the conditions 
on which they are granted shall be the subject of separate agreements, in each case, between such 
country and the Organization. A, long as it remains under the obligation to grant advances, such 
country shall have an ex officio seat on the Executive Committee. 
(b) The country referred to in subparagraph (a) and the Organízation shall each have the right 
to denounce the obligation to grant advances, by wntten notification. Denunciation shall take effect 
three years afier the end of the year in wmch it has been notified. 
(8) The auditing of the accounts shall be effected by one or more ofthe countries ofthe Uníon 
or by external aúditors, as provided in the financia! regulations. They shall be designated, with their 
agreement, by the Assembly. 
Article 17 
[Amendment of Mides 13 to 17] 
(1) Proposals for the amendment of Mides 13, 14, 15, 16, and the present Miele, mal be 
initiated by any country member ofthe Assembly, by the Executive Committee, or by the Director 
GeneraL Such proposals shall be commurucated by the Director General to the member countries 
of the Assembl y at least six months in advance of their consideration by the Assembl y. 
(2) Amendments to the Mieles referred to in paragraph (l) shall be adopted by the A.ssembly. IPlN/lIBW AIIII 
Page 47 
Adoption shall require tmee-fourtlls of the votes cast, provided that any amendment to Artide 13, 
and to the present paragraph, shall require four-fiftlls of the votes cast. 
(3) Any amendment to the Artides referred to in paragraph (1) shall enter into force one month 
after written notifications of acceptance, effected in accordance with their respective constitutional 
processes, have been received by the Director General from tmee-fourtlls of the countries members 
of the Assembly at the time it adopted the amendment. Any amendment to the said Artides thus 
accepted shall bind all the countries which are members of the Assembly al the time the amendment 
enters into force, or wruch become members thereof al a subsequent date, provided that any 
amendment increasing the financial obligations of countries of the Uníon shall bind only those 
countries wruch have notified their acceptance of such amendment. 
Artide 18 
[Revision of Artieles 1 to 12 and 18 to 30] 
(1) This Convention shall be submitted to revision with a view to the introduction of amend­
ments designed to improve the system of the Union. 
(2) For that purpose, conferences shaH be he Id successively in one ofthe countries ofthe Union 
among the delegates of the said countries. 
(3) Amendments to Artieles 13 to 17 are govemed by the provisions of Artide 17. 
Artide 19 
[Special Agreements] 
It is understood that the countries of the Union reserve the right to make separately between 
themselves special agreements for the protection of industrial property, in so far as these agreements 
do not contravene the provisions of trus Convention. 
Article 20 
[Ratification Oi Accession by Countries of the Union; Entry Into Force] 
(1) (a) Any country of the Uníon wruch has signed this Act may ratify it, if it has no! signed it, 
may accede to ií. Instruments of ratification and accession shall be deposited with the Director 
General. 
(b) Any country of the Union may declare in its instrument of ratification or accession that its 
ratification or accession shaH no! apply: 
(i) to Artieles 1 to 12, or 
(ii) to Artieles 13 to 17. 
(e) Any country ofthe Union which, in accordance with subparagraph (b), has exduded from 
the effects 'of its ratification Oi accession one of the two groups of Mides referred io in that 
subparagraph mayal any later time declare tha! it extends the effects of its ratification or accession 
to that group of Artides. Such dedaration shall be deposited with the Director General. 
(2) (a) Artides 1 to 12 shaU enter jnto force, with respect to the first ten countries of the Union 
which have deposited instruments of ratification or accession without making the dedaration 
permitted under paragraph (1) (b) (i), three montlls after the deposit of the ter.th such instrument of 
ratification or accession. 
(b) Mides 13 to 17 shaU enter inío force, with respect to the first ten countries of the Uníon 
which have deposited instruments of ratification or accession without making the dedaration 
permitted under paragraph (1) (b) (ii), tmee months after the deposit of the tenth such instrument 
of ratification or accession. IP/NII/BWA/U¡ 
Page 48 
(e) Subject 10 the initial entry inío force, pursuant to the provisions of subparagraphs (a) and eb), 
of each of the two groups of Artides refened to in paragraph (1) (b) (i) and (ii), and subject 10 the 
provisions of paragraph (1) (b), Artides 1 to 17 shall, with respect to any country of the Union, other 
than those refened to in subparagraphs (a) and (b), which deposits an instrument of ratification or 
accession or any country ofihe Union which deposits a dedaration pursuant to paragraph (1) (e), 
enter inlo force truee months afier the date of notification by the Director General of such deposit, 
uruess a subsequent date has been indicated in the instrument or dedaration deposited. In the latter 
case, ihis Act shaH enter inío force with respect to thuí countíy on the date thus indicated. 
(3) With respect io any country of the Union which deposits an instrument of ratification or 
accession, Artides 18 to 30 shall enter into force on the éarlier of the dates on which any of the groups 
of Artides refened to in paragraph (1) (b) enters inío force with respect to that country pursuant 
to paragraph (2) (a), (b), or (e). 
Article 21 
[Accession by Countries Outside the Union; Entry Into Force] 
(1) Any cmmtry outside the Union may accede to ihis Act and thereby become a member ofthe 
Union. Instruments of accession shaH be deposited with the Director General. 
(2) (a) With respect 10 any country outside the Union which deposits its instrument of accession 
one month or more before the date of entry into force of any provisions of the present Act, ihis Act 
shaH enter into force, uruess a subsequent date has been indicated in the instrument of accessíon, 
on the date upon which provisions first enter ¡nto force pursuant 10 Mide 20 (2) (a) or (h); provided 
tha!: 
(i) if Artides 1 to 12 do no! enter into force on that date, su eh country shaH, during the 
interim period before the entry ¡nto force of such provisions, and in substitution 
therefor, be oound by artides 1 to 12 ofthe Lisoon Act, 
(ii) if Mieles 13 to 17 do not enter into force on ihat date, such country shall, during the 
interim period before the entry ¡nto force of such provisions, and in substitution therefor, 
be oound by Artides 13 and 14 (3), (4), and (5), of the Lisbon Act. 
If a country indicates a subsequent date in its instrument of accession, ihis Act shall enter into force 
with respect 10 ihat country on the date thus indicated. 
(b) With respect to any country outside the Union which deposits its instrument of accession on 
a date which is subsequent to, or precedes by less than one month, the entry into force of one group 
of Mides of the present Act, trus Act shall, subject to the proviso of subparagraph (a), enter into 
force three months afier the date on which its accession has been notified by the Difect General, 
uruess a subsequent date has been indicated in the instrument of accession. In the latter case. trus 
Act shaH enter ¡nto force with respect to that country on the date thus indicated. 
(3) With respect to any country outside the Union which deposits its instrument of accession 
afier the date of entry into force of the present Act in its entirety, Oí less than one month before such 
date, ihis Act shall enter ¡nto force three months after the date on wruch íts accession has been 
notified by the Director General, uruess a subsequent date has been indicated in the instrument of 
accession. In the latter ca...;;e, this Act shall enter ¡nto force with respect to that country on the date 
thus indicated. Anide 22 
[Consequenees of Ratification oI' Accession] IP/NIIIBWA/IIl 
Page 49 
Subject tothe possibilities of exeeptions provided for in Mides 20 (1) (b) and 28 (2), l'atification 
or accession shall automatically entail aeeeptanee of aH the clauses and admission to all the 
advantages of trus Act. 
Artide 23 
[Accession to EarlieI' Acts] 
Afier the entl'y into force of trus Act in its entirety, a country may no! accede to earlier Acts of 
trus Convention. 
Artide 24 
[Territol'ies] 
(1) Any country may declare in its instrument of ratification or accession, or may inforrn the 
Director General by written notification any time thereafiel', tha! trus Convention shall be applicable 
to aH orpart ofthose territories, designated in the declal'ation or notification, for the external relations 
of wruch it is responsible. 
(2) Any country wruch has made such a declaration or given such a notifieation may, at any time, 
notify the Director General that irus Convention shaU cease to be applicable to a11 or part of such 
territories. 
(3) (a) Any dedaration made undel' paragraph (1) shaB take dfect on the same date as the 
ratification ol' aeeession in the instrument of wrueh it was induded, and any notification given undel' 
such pal'agraph shaU take effect three months afier its notification by the Director General. 
(b) Any notification given under paragraph (2) shaH take effeet twelve months afier its receipt 
by the Director General. 
Artide 25 
[Implementation of the Convention on the Domestic Level] 
(1) Any eountry party to trus Convention undertakes to adopt, in accordance with its constitution, 
the measures neeessary to ensure the application of trus Convention. 
(2) It is understood that, at the time a eountry deposits its instrument of ratification or aceession, 
it will be in a position under its domestic law to give dfeet to the provisions of trus Convention. 
Artide 26 
[Denunciation] 
(1) This Convention shall I'emain in force without limitation as to time. 
(2) Any country may denounee trus Act by notification addressed to the Director General. Such 
denunciation shall constitute also denunciation of all earlier Acts and shaH affect oruy the eountry 
making it, the Convention remaining in full force and effect as regards the other countries of the 
Umon. IP/N/l/BWA/IIl 
Page 50 
(3) Denunciation shaU take effect one year after the day on wruch the Director General has 
received the notification. 
(4) The right of denundation provided by irus Mide shall no! be exercised by any country 
before the expiration of five years trom the date upon wruch it becomes a member of the Uníon. 
Artide 27 
[Application of Earlier Acts] 
(1) The present Act shaU, as regards the relations between the countries to wruch it applies, and 
to the extent that it applies, replace the Convention of París of March 20, 1883, and the subsequent 
Acts of revísion. 
(2) (a) As regards the countries to wruch the present Act does not apply, or does no! apply in its 
entirety, but to wruch the Usbon Act of October 31, 1958, applies, the latter shaH remain in force 
in its entirety or to the extent ihat the present Act do es no! replace it by virtue of paragraph (1). 
(b) Similarly, as regards the countries to wruch neither the present Act, nor portions thereof, nor 
the Usbon Act appUes, the London Act of June 2, 1934, shaH remain in force in its entirety Oí to 
the extent that the present Act does no! repIace it by virtue of paragraph (1). 
(e) Similarly, as regards the countries to wruch neither the piesent Act, nor portions thereof, nor 
the Usbon Act, nor the London Act appUes, the Hague Act of November 6,1925, shaH remain in 
force in its entirety or io the extent that the presen! Act does not replace it by virtue of paragraph 
(1). 
(3) Countries outside the Uníon wruch become party to trus Act shall appl y it with respect to any 
country of the Union no! party to trus Act or wruch, although party to tbis Act, has made a dedaration 
pursuant to Mide 20 (1) (b) (i). Such countries recognize tha! the said country ofthe Uníon may 
apply., in its relations with íhem, the provisions of the mos! recent Act to which it is party. 
Artide 28 
[Disputes] 
(1) Any dispute between two Oí more countries of the Uníon conceming ¡he interpretation or 
application of trus Convention, not settled by negotiation,' may, by any one of the countries 
concemed, be brought before the International Court of Justice by applicatian in conformity with 
the Statute of the Court, uruess the countries concemed agree on sorne other method of settlement. 
The country bringing the dispute before the Court shall inform the Intematianal Bureau; the 
Intemational Bureau shall bring the matter to the attention of ¡he other countries of the Uníon. 
(2) Each country may, at the time it signs trus Act or deposits its instrument of ratification or 
accession, declare that it does not cOI1.5ider itself bound by the provisions of paragraph (1). With 
regard to any dispute between such country and any other country of ¡he Unían, the provisions of 
paragraph (1) shall not apply. 
(3) Any country having made a declaration in accordance wíth the provisions of paragraph (2) 
may, al any time, withdraw its dedaration by notification addressed to the Director General. 
Artide 29 
[Signature, Languages, Depositary Functions] 
(1) (a) This Act shall be signed in a single copy in the French language and shall be depositcd 
with ¡he Govemment of Sweden. IP/NI!IBWAIII 1 
Page 51 
(b) Official texts sh?11 be established by ahe Director General, afier consultation with the 
interested Govemments, in the English, German, ItaHan, Portuguese, Russian and Spanish 
languages, and such other languages as the Assembly may designate. 
(e) In case of differences of opinion on the interpretation ofthe various texts, the French text shall 
prevaiL 
(2) This Act shall remain open for signature al Stockholm until January 13, 1968. 
(3) The Director General shall transmit two copies, certified by the Government of Sweden, of 
the signed text of ibis Act to the Governments of all countries of the Union and, on request to the 
Government of any other country. 
(4) The Director General shall register ibis Act with the Secretariat of the United Nations. 
(5) The Director General shaH notify the Governments of all countries of the Union of 
signatures, deposits of instruments of ratification or accession and any declarations induded in such 
instruments or made pursuant to Artide 20 (1) (e), entry into force of any provisions of ibis Act, 
notifications of denunciation, and notifications pursuant to Artide 24. 
Artide 30 
[Transitional Provisions] 
(1) Until the first Director General assumes office, references in ibis Act to the Intemational 
Burcau of the Organization or to the Director General shall be deemed to be references to the Burcau 
:ofthe Union or its Director, respectively. 
(2) Countries of the Union not bound by Artieles 13 to 17 may, until five years afier the entry 
into force of the Convention establísbing the Organization, exercise, if they so desire, the rights 
provided under Artieles 13 to 17 of this Act as if they were bound by those Artieles. Any country 
desiring to exercise such rights shall give written notification to that effect to the Director General; 
such notification shall be effective from the date of its receipt. Such countries shaH be deemed to 
be members of the Assembly until the expiration of the said periodo 
(3) As long as aH the countries ofthe Union have not become Members ofthe Organization, the 
International Bureau of the Organization shall also function as the Bureau of the Union, and the 
Director General as the Director of the said Burcau. 
(4) Once aH the countries of the Union have become Members of the Organization, the rights, 
obligations, and property, of the Bureau of the Union shall devolve on the International Bureau of 
the Organization. IPIN/lIBWA/IIl 
Page 52 
PARTI 
PARTU SECOND SCHEDULE 
AGREEMENT ON TRADE-RELATED ASPECTS OF 
INTELLECTUAL PROPERTY RIGHTS 
GENERAL PROVISIONS AND BASIC PRINCIPLES 
STANDARDS CONCERNING THE AV AILABILITY, SCOPE AND 
USE OF INTELLECTUAL PROPERTY RIGHTS 
l. Copyright and Related Rights 
2. Trademarks 
3. GeographicalIndications 
4. Industrial Designs 
5. Patents 
6. Layout-Designs (Topographies) of lntegrated Circuits 
7. Protection of U ndisclosed Information 
8. Control of Anti-Competitive Practices in Contractual Licences 
PARTIII ENFORCElviENT OF INTELLECTUAL PROPERTY RIGHTS 
l. General Obligations 
2. Civil and Administrative Procedures and Remedies 
3. Provisional Measures 
4. Special Requirements Related to Boarder Measures 
5. Criminal Procedures 
PARTIV 
PARTV 
PARTVI 
PART VII 
Mernhers, ACQUISITION AND MAINTENANCE OF INTELLECTUAL 
PROPERTY RIGHTS AND RELA TED INTER·P ARTES PROCEDURES 
DISPUTE PREVENTION AND SETTLElviENT 
TRANSITIONAL ARRANGElviENTS 
INSTITUTIONAL ARRANGElviENTS; FINAL PROVISIONS 
AGREEMENT ON TRADE-RELATED ASPECTS OF 
INTELLECTUAL PROPERTY RIGHTS 
Desiring to reduce distertions and impediments to international trade, and taking into 
account the need to pro mote effective and adequate protection of íntellectual property rights, 
and to ensure that measures and procedures to enforce intellectual property rights do not 
themselves become barriers te legitimate trade; 
Recognizing, to this end, the need for new rules and disciplines conceming: 
(a) the applicability of the basic principIes of GA TI 1994 and of relevant intemational 
intellectual property agreements or conventions; 
(b) the provision of adequate standard s and principIes concerning the availability, scopc 
and use of trade-related intellectual property rights; IPINIl /BW A/I/I 
Page 53 
(e) me provision of effective and appropriate means for the enforcement of trade-related 
intellectual property rights. taking into account differences in nationallegal systems; 
(á) me provision of effective and expeditious procedures for the multilateral preventíon 
and settlement of disputes between governments; and 
(e) transitional arrangements aiming at me fuUest participation in me results of the 
negotiations; 
Recognizing the need for a multilateral framework of principIes. rules and disciplines 
dealing wim international trade in counterfeit goods; 
Recognizing that intellectual property rights are private rights; 
Recognizing the underlying public policy objectives ofnational systems for me protection 
of intellectual property, including developmental and technological objectives; 
Recognizing also the special needs of the least-developed country Members in respect of 
maximum flexibility in the domestic implementation of laws and regulations in order to 
enable mem to create a sound and viable technological base; 
Emphasizing the importance of reducing tensions by reaching strengthened commitments 
to resolve disputes on trade-related intellectual property issues through multilateral proce­
dures; 
Desiring to establish a mutually supportive relationship between the WTO and me World 
Intellectual Property Organization (referred to in this Agreement as "WIPO") as well as other 
relevant international organizations; 
Herebyagree as follows: 
PARTI 
GENERAL PROVISIONS AND BASIC PRINCIPLES 
Article 1 
Nature and Scope ofObligations 
1. Members shall give effect to the provisions ofmis Agreement. Members may, but shall 
not be obliged to. implement in meir law more extensive protection man i5 required by this 
Agreement. provided mat such protection does not contravene the provisions of mis Agree­
ment. Members shaU be free to determine the appropriate method of implementing me 
provisions of mis Agreeement within their own legal system and practice, 
2. For me purposes of mis Agreement. me term "inteHectual property" refers to an 
categories of intellectual property mat are the subject of Sections 1 through 7 of Pan n. 
3. Members shaU accord me treatment providéd for in this Agreement to me nationals of 
omer Members.1 In respect of me relevant intellectual property right. me nationals of othcr 
Members shall be understood as those natural or legal persons that would meet thecriteria for 
eligibility for protection provided for in me Paris Convention (1967). me Beme Convention 
(1971). me Rome Conyemion and the Treaty on Intellectual Property in Respectoflmegrated 
Circuits, were aH Mem bers of me WTO mem bers of mose con ventions. 2 Any Mem ber availing 
itself of me po ss ibilities provided in paragraph 3 of Artic1e 5 or paragraph 2 of Artic1e 6 of mé 
Rome Convemion shall make a notification as foreseen in mose provisions lO me Council for 
Trade~Related Aspects of InteUectual Property Rights (the "Council for TRIPS"). 
'When ·""tional." """ rcferred 10 in !hioA~t,!he)' slWI be deemccl, in !he ""'"" oÍ uepuat.e =tomo ICl"ritory Membe: oí !he WTO, 10 mean persoru, 
naturnl O!t ¡ess.!, ... ho """ domidled cr ""ha hlIve 1I real and effecúve ind .... tricl O!t commcn::w esub!iohmen!. in lh.at GUlItOOU ICl"ritory. 
'In this A¡¡reemcnt, "Paris Cooventioo' refers 10 !.he l'aris Coovention for the Proteetioo oC Industricl Property; 'Paro Coovention (967)" reCento!he 
Stockholm Act ofWs CooYention oC 14 July 1967. "Beme Conventioo' reCen lO !he Beme Conventicm fa: !he Protecúon oí Liternry and Artistie Workll; 
"Berna Cooventioo (971)" ... fero !O !he Puis Act oC this Coo\lenti<m oC 24 July 1971. "Reme eon""nticm" rei" ... to!he Internacional Conventicm fot!he 
Prot.ecúon ofPl:rfOl1l'lCu, Producen oC Phooogranu ... .,¿ Bro&dcallting OrgllIliuti""", lIdopted "t Rome 01126 Octobe: 1961. "Treaty 00 IntellccttW Property 
in Respect oC lntegrated Circuits" (!PIC T ...... ty) reÍets to !he Tresty cm m\e!leeru&l Property in Respect oC Int.egrated Circuit¡¡. Adopted iÚ Washin.gtoo en 26 
My 1989. "WTO Agreement" refern lo the A.grt:cmo:nt Esublishing !he wrO. íPIN/I/BWA/I11 
Page 54 
Arlicle 2 
1 ntellectual Property Conventions 
1. In respectofParts lI, III and IV ofthis Agreement, Members shall comply wim Artieles 
1 through 12, and Article 19, of the Paris Convention (1967). 
2. Noming in Parts 1 to IV of mis Agreement shaU derogate from existing obligations that 
Mem bers may have to each omer under me Paris Convention, me Berne Convention, me Rome 
Convention and the Treaty on Intel1ectual Property in Respect of Integrated Circuits. 
Article 3 
Nacional Treatment 
1. Each Member shall accord to the nationals of omer Members treatment no less 
favourable man that it accords to its own nationals with regard to the protection3 of intellectual 
property, subject to me exceptions already provided in, respectively, me Pans Convention 
(1967), me Berne Convention (1971), the Rome Convention or me Treaty on InteUectual 
Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms 
and broadcasting organízations, this obligation only applies in respect of me rights provided 
under this Agreement. Any Member availing itself of the possibilities provided in Artide 6 of 
the Berne Convention (1971) or paragraph 1(b) of Anide 16 of me Rome Convention shal. 
make a notification as foreseen in those provisions to me Council for TRIPS. 
2. Members may avail themselves of me exceptions permitted under paragraph 1 in 
relation to judiéial and administrative procedures, including me designation of an address for 
service or me appointment of an agent within the jurisdiction of a Member, only where such 
exceptions are necessary to secure complíance wim laws and regulations which are not 
inconsistent wim me provisions of this Agreement and where such practices are not applied 
in a manner which would constitute a disguised restriction on trade. 
Artide 4 
Most-F avoured-Nation Treatment 
\Vith regard to the protection of intellectual propeny, any advantage, favour, privilege or 
immunity granted by a Member lO me nationals of any omer country shall be accorded 
immedíately and unconditionally to me nationals of a11 omer Members. Exempted from this 
obligation are any advantage, favour, privilege or immunity accorded by a Member: 
(a) deriving from international agreements on judicial assistance or law enforcement of a 
general nature and not particularly confined to me protection of inteUectual property; 
(b) granted in accordance with me provisions ofthe Berne Convention (1971) orme Rome 
Convention aumorizing that the treatment accorded be a function not of nallonal 
treatment but of the treatment accorded in anomer country; 
(e) in respect of me rights of perfonners, producers of phonograms and broadcasting 
organizations not provided under this Agreement; 
(ti) deriving from international agreements related to the protection of inteHectuaI 
property which entered into force prior lO the entry into force of me WTO Agreement, 
provided that such agreements are notified to the Council for TRIPS and do nOi 
constitute an arbitrary or unjustifiable discrimination against nationals of omer 
Members. 
'For !.he l""'P"5"s oC Artieles 3 and 4, "protectioo' ,hall indude manet$ affecting !he avo.ilabílity. acquisition, .cope, main= L"ld en[=mem oC 
intdlcetual property rights as well as th= mane" affecting \he use oí intd1ectual propeny ngl'.tl! opeeifk.illy add.resseJ in th;. Ag.rnemcnL Anide 5 
Multilateral Agreements on Acquisition or 
Maintenance of Protection IPiN/1/BWA/I/1 
Page 55 
The obligations under Articles 3 and 4 do nol apply to procedures provided in multilateral 
agreements concluded under the auspices ofWIPO relating to me acquisition or maintenance 
of intel1ectual property rights. 
Artide 6 
Exhaustion 
For the purposes of dispute settlement under mis Agreement, subject to me provisions of 
Articles 3 and 4 nothing in this Agreemcnt shaH be used to address the issue of the exhaustion 
of intellectual property rights. 
Article 7 
Objectives 
The protection and enforcement of intellectual property rights should contribute to the 
promotion of technological innovation and to the transfer and dissemination oftechnology, to 
the mutual advantage of producers and users of technological knowledge and in a manner 
conducive to social and economic welfare, and to a balance of rights and obligations. 
Article 8 
PrincipIes 
1. Members may, in fonnulating or amending their laws and regulations, adopt measures 
necessary to protect public health and nutrition, and to promote the public interes! in sectors 
of vital importance to their socio-economic and technological development, provided that 
such measures consistent with the provisions of this Agreement. 
2. Appropriate measures, provided that they are consistent with the provisions of this 
Agreement, may be needed to prevent the abuse of intellectual property rights by right holders 
or the resort to practices which unreasonably restrain trade or adversely affect the intemational 
transfer of technology. 
PARTH 
ST ANDARDS CONCERNING THE A V AILABILITY, SCOPE 
AND USE OF INTELLECTUAL PROPERTY RIGHTS 
SECTION 1: COPYRIGHT AND RELA TED RlGHTS 
Atiele 9 
Relation to the Bane Convention 
1. Members shall comply with Articles 1 through 21 ofthe Berne Convention (1971) and 
the Appendix thereto. However, Membcrs shall Dot have rights or obligations under this 
Agreement in respect of the rights conferred under Article 6bis of mat Convention or of the 
'rights derived therefrom. IPINIl/BW A!V] 
Page 56 
Copyright protection shall extend to expressions and not to ideas. procedures, methods 
of operation or mathematical concepts as such. 
Article 10 
Computer Programs and Compilations 01 Data 
1. Computer programs, whether in source or object code. shaU be protected as literary 
works under the Beme Convention (1971). 
2. 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 inteUectual 
creations shall be protected as such. Such protection, which shall not extend to the data or 
material itself, shall be without prejudice to any copyright subsisting in the data or material 
itself. 
Articlll 
Rental Rights 
In respect of at least computer programs and cinematographic works, a Member shaH 
provide authors and their successors in title the right to authorize or to prohibit the commercial 
renta! to the public of orig in al s or copies of their copyright works. A Member shaU be excepted 
vom this obligation in respect of cinematographic works unless such renta! has led to 
widespread copying of such works which is materially impairing the exclusive right of 
reproduction conferred in that MembÚ on authors and theif successors in title. In respect of 
computer programs, this obligation does not apply to rentals where the program itself is nOl 
the essential object of the rental. 
Article 12 
Term 01 Protection 
Whenever the term of protection of a work, other than a photographic work or a work of 
applied art, is calculated on a basis other than the life of a natural person, such term shall be 
no less than 50 years from the end of the calendar year of authorized publication, or, failing 
5uch authorized publication within 50 years from the making of the work, 50 years from the 
end of the calendar year of making. 
AnicZe 13 
Limitations and Exceptions 
Members shall confine limitations or exceptions te exclusive rights to certain special cases 
which do not conflict with a normal exploitation of the work and do not unreasonabIy prejudice 
the legitimate imerests of the right holder. Anicle 14 
Protection of Performers, Producers of Phonograms 
(Sound Recordings) and Broadcasting Organizations lPlNllIBWA/I/l 
Page 57 
l. In respect of a fixation of their performance on a phonogram, performers shaH have the 
possibility ofpreventing me following acts when undertaken without meir authorization: the 
fixation of their unfixed performance and me reproduction of such fixation. Performers shall 
al so ha ve the possibility of preventing the following acts when undertaken without their 
authorization: the broadcasting by wire1ess means and me communication to the public of 
their live performance. 
2. Producers of phonograms shall enjoy the right to aumorize or prohibit the direct or 
indirect reproduction of meir phonograms. 
3. Broadcasting organizations shall have the right to prohibit me following acts when 
undertaken without their authorization: the fixation, the reproduction of fixations, and the 
rebroadcasting by wireless means of broadcasts, as wen as the communication to the public 
of television broadcasts of me same. Where Members do nol grant such rights to broadcasting 
organizations, they shall pro vide owners of copyrigh t in me subject marter of broadcasts with 
the possibility of preventing me aboye acts, subject lO the provisions of the Berne Convention 
(1971). 
4. The provisions of AnicIe 11 in respect of computer programs shall apply mutatis 
mutandis to producers of phonograms and any omer right holders in phonograms as deter­
mined in a Members's law. If on 15 April 1994 a Member has in force a system of equitable 
remuneration of right holders in respect of the rental of phonograms, ir may maintain such 
system provided that the commercial rental of phonograms is not giving rise to the material 
impairment of the exclusive rights of reproduction of right holders. 
5. The term of the protection available under mis Agreement to performers and producers 
of phonograms shaU last at least until the end of a period of 50 years computed from me end 
of the calendar year in which me fixation was made or the performance took place. The term 
of protection granted pursuam to paragraph 3 shalllast for at least 20 years from me end of the 
calendar year in which the broadcast rook place. 
6. Any Member may, in rclation to merights conferred underparagraphs 1,2 and 3, provide 
for conditions, limitations, exceptions and reservations to the extent permitted by me Rome 
Convention. However, the provisions of ArticIe 18 of the Berne Convention (1971) shall also 
apply, mutatis mutandis, to the rights of performers and producers of phonograms in 
phonograms. 
SECTION 2: TRADEMARKS 
Anicle 15 
Protectable Subject Malta 
1. Any sign, or any combination of signs, capable of distinguishing the goods or services 
of one undertaking from mose of other undertakings, shall be capable of constituting a 
trademark. Such signs, in particular words including personal narnes, letters, numerals, 
figurative elements and combinations of colours as wen as any combination of such signs, 
shall be eligible for registration as trademarks. Where signs are not inherently capable of 
distinguishing me relevant goods or services, Members rnay make registrability depend on 
distinctiveness acquired mrough use. Mem bers may require, as a condition of registration, mat 
signs be visually perceptible. IPlNll/BWAIIIl 
Puge 58 
2. Paragraph 1 shall not be understood lO prevent a Member from denying registration of 
a trademark on other grounds, provided that they do not derogate from the provisions of the 
Paris Convention (1967). 
3. Members may make registrability depend on use. However, actual use of a trademark 
shall not be a condition for filing an application for registration. An application shaH not be 
refused solely on the ground that intended use has not taken place before the expiry of a period 
of mree years from the date of application. 
4. The nature of me goods or services to which a trademark is to be applied shall in no case 
form an obstacle to registration of the trademark. 
5. Members shall publish each trademark either before it is registered or promptly arter ir 
is registered and shall afford a reasonable opportunity for petitions to cancel the registration. 
In addition, Members may afford an opportunity for the registration of a trademark to be 
opposed. 
Article 16 
Rights Conferred 
1. The owner of a registered trademark shall have the exclusive right to prevent a11 mird 
parties not having the owner's consent from using in me course of trade identical or similar 
signs for goods or services which are identical or similar lO those in respect of which the 
trademark is registered where such use would result in a likelihood of confusion. In case of the 
use of an identical sign for identical goods or services, a likelihood of confusion shall be 
presumed. The rights described aboye shall not prejudice any existing prior rights, nor shall 
mey affect the possibility of Members making rights available on the basis of use. 
2. Article 6bis of me Paris Convention (1967) shall apply, mutatis mutandis, to services. In 
deterrninig whether a trademark is well-known, Members shall take accountofthe knowledge 
of me trademark in the relevant sector of the public, including knowledge in the Member 
concerned which has been obtained as a result of the trademark. 
3. Anicle 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or 
services which are not similar to those in respect of which a trademark is registered, provided 
mat use of mat trademark in relation to those goods or services would indicate a connection 
between those goods or services and the owner of the registered trademark and provided that 
the interests of the owner of me registered trademark are likely to be damaged by such use. 
Anide 17 
Exceptions 
Members may provide limited exceptions to the rights conferred by a trademark, such as fair 
use of descriptive terms, provided that such exceptions take account of the legitimare interests 
of me owner of the trademark and of third parties. 
Anide 18 
Term of Protection 
Initial registration, and each renewal of registration, of a trademark shall be for a term of 
no less than seven years. The registration of a trademark shall be renewable indefinitely. Article 19 
Requirement ofUse IPIN/l/BWA/lIl 
Page 59 
1. If use is required to maintain a registration, the registradon may be cancelled only after 
an uniterrupted penod of at least three years of non-use, unless valid reasons based on the 
existence of obstacles to such use are shown by the trademark owner. Circumstances arising 
independently of the will of the owner of the trademark which constitute an obstacle to the use 
of the trademark, such as import restrictions on or other governmem requirements for goods 
or services protected by the trademark, shall be recognized as valid reasons for non-use. 
2. When subject to the control of its owner, use of a trademark by another person shaH be 
recognized as use of the trademark for the purpose of maintaining the registration. 
Article 20 
Other Requirements 
The use of a trademark in the course of trade shall not be unjustifiably encumbered by 
special requirements, such as use with another trademark, use in a special form or use in a 
marmer detrimental to its capability to distinguish the goods or services of one undertaking 
from those of other undertakings. This will not preclude a requirement prescribing the use of 
the trademark identifying the undertaking producing the goods or services along with, but 
without linking it to, the trademark distinguishing the specific goods or services in question 
of that undertaking 
Anicle 21 
Licensing and Assignment 
Members may determine conditions on the licensing and assignment oftrademarks, it being 
understood that the compulsory licensing of trademarks shall not be permitted and that the 
owner of a registered trademark shall have the nght to assign the trademark with or without 
the transfer of the business to which the trademark belongs. 
SECTION 3: GEOGRAPHICAL INDICA TIONS 
Anicle 22 
Protection ofGeographical lndications 
1. Geographical indications are, for the purposes of this Agreement, indications which 
identify a good as originating in the territory of a Member, or a region or 10cality in that 
territory, where a given quality, reputation or other characteristic of the good is essentiaHy 
attributable to its geographical origino 
2. In respect of geographical indications, Members shaH provide the legal means for 
interested parties to prevent 
(a) the use of any means in me designation or presentation of a good that indicates or 
suggests mat me good in question originates in a geographical area other than the true 
place of origin a manner which mis1eads tlrepublic as to the geographical origin of 
the good; IPIN/1/BWA/í/l 
Puge 60 
(b) any use which eonstitutes an aet of unfair eompetition within the meaning of Artide 
lObis of the Paris Convention (1967). 
3. A Member shaU, ex officio if its legislation so permits or at the request of an interested 
party, refuse or invalidate the registration of a trademark whieh contains or consists of a 
geographical indicaüon with respect to goods not originating in the territory indicated, if use 
of the indication in the trademark for such goods in that Member is of such a nature as to 
mislead the public as to the true place of origino 
4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical 
indieation which, although literally true as to the territory, region or locality in which the 
goods originate, falsely represents to the public that the goods originate in another territory. 
Article 23 
Additional Protectionfor Geographicallndications 
for Wines and Spirits 
l. Each Member shall provide the legal mean s for interested parties to prevent use of a 
geographical indication identifying wines for wines not originating in the place indicated by 
the geographical indication in question or identifying spirits for spirits not originating in the 
place indicated by the geographical indication in question, even where the true origln of the 
goods is indicated or the geographical indication is used in translation or accompanied by ex­
pressions such as "kind", "type", "style" "imitation" or the like.4 
2. The registration of a trademark for wines which contains or consists of a geographical 
indication identifying wines or for spirits which contains orconsists of a geographical 
indication identifying spirits shall be refused or invalidated, ex officio if a Member's 
legislation so permits or at the request of an interested party, wíth respect to such wines or 
spirits not having this origino 
3. In the case of homonymous geographical indications for wines, protection shall be 
accorded to cach indication, subject to the provisions of paragraph 4 of Aniele 22. Each 
Member shall determine the practical conditions under which the homonymous indications in 
question wiH be differentiated from each other, taking into account me need to ensure 
equitable trcatment of the producers concemed and that consumers are not misled. 
4. In order to facilitate the protection of geographical indícations for wines, negotiations 
shall be undertaken in the Council for TRIPS conceming the establishment of a multilateral 
system of notification and registration of geographical indications for wines eligible for 
protection in those Members particípating in the system. 
Anide 24 
J nternational N egotiations; Exceptions 
1. Members agree to enter into negotiations aimed al increasing the protection of individual 
geographical indications under Artiele 23. The provisions of paragraphs 4 through 8 below 
shall not be used by a Member to refuse to conduct negotations or to conelude bilateral or 
multilateral agreements. In the context of such negotiations, Members shall be willing to 
considerthe continued applicability ofthese provisions to individual geographical indications 
whose use was the subjecf of such negotiations. 
2. The Council for TRIPS shall keep under review the application of the provisions of this 
Section; the first such review shall take place within two years of the entry into force of the 
\VTO Agreement. Any matter affecting the compliance wilh the obligations under these 
4Notw:thsunding the fin! scnt<:nce of A:tic!e 42, ?>iembers mayo with respect to t.hcsc obligatJcns, i.r:stead provide fae enío=nt by .dministr,rive .c:ion. ¡ P/NI UBW AIUl 
Page 61 
provisions may be drawn to the attention of the Council, which, at me request of a Member, 
shall consult with any Member or Members in respect of such matter in respect of which it has 
not been possible to find a satisfactory solution through bilateral or plurilareral consultations 
between me Members concerned. The Council shall take such action as may be agreed to 
facilitate the operation and further me objectives of this Section. 
3. In implementing mis Section, a Member shall not diminish the protection of geographi­
cal indications mat existed in that Member immediately prior to the date of entry into force 
of the WTO Agreement. 
4. Nothing in this Section shall require a Member to prevent continued and similar use of 
a particular geographical indication of another Member identifying wines or spirits in 
connection with goods or services by any of its nationals or domiciliarles who have used that 
geographical indication in a continuous manner with regard to the same or related goods or 
services in the terrÍtory ofthat Member either Ca) for at least 10 years preceding 15 April, 1994 
or (b) in good faim preceding that date. 
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 Member as defined in Part VI; 
or 
(b) before the geographical indication is protected in its country of origin; 
measures adopted to implement mis Section shall not prejudice eligibility for or the validity 
of the registration of a trademark, or the ríght to use a trademark, on the basis mat such a 
trademark is identical with, or similar to, a geographical indication. 
6. Nothing in this Section shall require a Member te apply its provisions in respect of a 
geographical indication of any other Member with respect to goods or services for which the 
relevant indication is identical with the term customary in common language as the common 
name for such goods or services in the territory of that Member. Nothing in this Section shall 
require a Member to apply its provisions in respect of a geographical indication of any other 
Mem ber with respect to products of the vine for which the relevant indication is identical with 
the customary name of a grape varlety existing in me territory of mat Member as of me date 
of entry into force of the WTO Agreement 
7. A Member may provide that any request made under this Section in connection wim 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 mat Member or after me date of 
registration of the trademark in that Member 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 Member, provided that the geographical indication is not used or registered in 
bad faith. 
8. The provisions of this Section shall in no way prejudice the right of any person to use, 
in the course of trade, that person's name or the name of that person's predecessor in business, 
except where such name 1S used in such a manner as to mislead me publico 
9. There shall be no obligatíon under this Agreement to protect geographical indications 
which are not or cease to be protected in their country of origin, or which have fallen imo disuse 
in mat country. 
SECTION 4: INDUSTRIAL DESIGNS 
Article 25 
Requirements for Protection 
1. Members shall provide for the protection of independentIy created industrial dcsigns 
mat are new or original. Members may provide that designs are nOi new or original if they do 
not significantIy differ from known designs or combinations of known design featurcs. IP/NIl/BWAIIIl 
Page 62 
Members may provide mat such protection shaU not extend to designs dictated essentially by 
technical or functional considerations. 
2. Each Member shall ensure that requirements for securing protection for textile designs, 
in particular in regard to any cost, examination or publicaríon, do not unreasonably impair the 
opportunity to seek and obtain such protection. Members shaH be free to meet this obligation 
through industrial design law or mrough copyright law. 
Artide 26 
Protection 
L The owner of a protected industrial design shaH have the right to prevent mird parties not 
having me owner's consent from making, seHing or importing articles bearing or embodying 
a design which is a copy, or substantially a copy, of the protected design, when sl.1ch acts are 
l.1ndertaken for commercial purposes. 
2. Members may provide limited exceptions to me protection of industrial designs, 
provided that such exceptions do nol l.1nreasonably conflict with the normal exploitation of 
protected industrial designs and do nol unreasonably prejl.1dice the legitimate interests of the 
owner of the protected design, taking aCCOl.1nt of the legitimate interests of third parties. 
3. The duration of protection available shal1 amOl.1nt to a least 10 years. 
SECTION 5: PATENTS 
Artide 27 
Patentable Subject Matter 
1. Subject te me provisions of paragraphs 2 and 3, patents shall be available for any 
inventions, whether products or processes, in all fields of technology, provided mal mey are 
new, in vol ve an inventive step and are capable of industrial applícation.5 S ubject to paragraph 
4 of Artide 65, paragraph 8 of Artide 70 and paragraph 3 of this Artiele, patents shall be 
available and patent rights enjoyable without discrimination as te the place of invention, the 
field of technology and whether products are imported or locally produced. 
2. Members may exdude from patentability inventions, me prevention wimin meir 
territory of me commercial exploitation of which is necessary to protect ordre public or 
morality, including to protect human, animal or plant life or health or to avoid serious 
prejudice to the environment, provided mat sl.1ch exdusion is not made merely because me 
exploitation ís prohibited by meir law. 
3. Members may also exclude from patentability: 
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals; 
(b) plants and animals omer man micro-organisms, and essentially biological processes 
for the prodl.1ction of plants or animals other than non-biologícai and microbiological 
processes. However, Members shall provide for me protection of plant vaneties either 
by patents or by an effective sui generis system or by any combination thereof. The 
provisions of this subparagraph shall be reviewed four years after the date of entry into 
force of the \VTO Agreement. 
Anide 28 
Rights Conferred 
L A patent shall confer on its owner the following exclusive rights: 
'Por th<: pUlpO"'" oftllio Article. th<: termo "inventiYe!tCp" 1Il1d ""'pable oC indu.triAl appli<:auon" !t'-"y be dc=:::>ed by a ~be1" to be .ynooyrnoll.> with 
th<: t.crms "noo-ohv¡OM' a:nd "useful" res¡x:cuvely. IPIN/l/BW A/I/l 
Page 63 
(a) where me subject matter of a patent is a product, te prevent third parties not having the 
owner's consent from me acts of: making, using, offering for sale, selling, or import­
ing6 for these purposes that product; 
(b) where the subject marter of a patent is a process, to prevent mird parties not having the 
owner's consent from the act of using the process, and from the acts of: using, offer­
ing for sale, selling, or importing for these purposes at least me product obta.ined 
directly by that process. 
2. Patent owners shall also have the right to assign, or transfer by succession, the patent and 
lO conclude licensing contracts. 
Ariicle 29 
Conditions on Patent Applicants 
1. Members shall require mat an applicant for a patent shall disclose the invention in a 
manner sufficiently clear and complete for the invention to be camed out by a person skilled 
in the art and may require me applicant te indicate the best mode for carrying out the invention 
known lO me inventor at me filing date or, where priority is claimed, at me priority date of the 
application. 
2. Members may require an applicant for a patent te provide informatíon concerning the 
< applicant's corresponding foreign applications and grants. 
Artide 30 
Exceptions ro Rights Conferred 
Members may provide limited exceptions to the exclusive rights conferred by a patent, 
provided mat such exceptions do not unreasonably conflict with a normal exploita.tion of me 
patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking 
account of the legitimate interests of third parties. 
Article 31 
Other U se Without Authorization of [he Right Holder 
Where the law of a Member allows for other use? of the subject matter of a patem wilhout 
the authorization of the right holder, including use by the government or mird parties 
authorized by the government, the foHowing provisions shaU be respected: 
(a) authorization of such use shaH be considered on its individual merits; 
(b) such use may onIy be permitted if, prior to such use, me proposed user has made efforts 
to obta.in authorization from the right holder on reasonable commercial terms and 
conditions and that such efforts have not been successful within a reasonable period 
of time. This requirement may be waived by a Member in me case of a national 
emergency or other circumstances of extreme urgency or in cases of public non­
commercial use. In situations ofnational emergency or other cllcumsta.nces 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, me right holder 
shall be inforrned promptIy; 
'This right,like al.! ot.ber rights conferred under tlús Agreement in res¡:ect oi!.he use, sale, i.:npataticn or other distributioo of goods, is subject to the 
provuioos oC Artiele 6. 
"Oo,her use" refers to use olher!han lha! allowed un.der Article 30. IPINIl/BWA/I/l 
Page 64 
(e) the scope and duration of such use shall be limited to the purpose for which it was 
authorized, and in the case of semi-conductor technology shall only be for public non­
commercial use or to remedy a practice determined after judicial or administrative 
process to be anti-competitive; 
(d) su eh use shaU be non-exclusive; 
(e) such use shall be non-assignable, except with that part of the enterprise or goodwill 
which enjoys such use; 
(f) any such use shall be authorized predominantly for the supply ofthe domestic market 
of the Member authorizing such use; 
(g) authorization for such use shaU be Hable, subject to adequate protection of the 
legitimate interests of the persons so authorized, to be tenninated if and when the 
circumstances which led to it cease to exist and are unlikely to recur. The competent 
authority shall have the authority to review, upon motivated request, the continued 
existence of these circumstances; 
(h) the right holder shall be paid adequate remuneration in the circumstances of each case, 
taking into account the economic value of the authorization; 
(i) the legal validity of any decision relating lO the authorization of such use shall be 
subject to judicial review or other independent review by a distinct higher authority in 
that Member; 
(j) any decision relating to the remuneration provided in respect of such use shall be 
subject to judicial review or other independent review by a distinct higher authority in 
that Member 
(k) Members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) 
where such use is pennitted to remedy a practice determined arter judicial or 
administrative process to be anti-competitive. The need to correct anti-competitive 
practices may be taken into acount in determining the amount of remuneration in such 
cases. Competent authorities shall have the authority to refuse termination of authori­
zation if and when the conditions which led to such authorization are likely to recur; 
(1) where such use is authorized to permit the exploitation of a patent ('lhe second patent") 
which cannot be exploited without infringing another patent ("me first patent"), the 
following additional conditions shall apply: 
(i) the invention c1aimed in the second patent shall involve an important technical 
advance of considerable economic significance in relation to the invention 
claimed in me first patent; 
(H) the owner of the first patent shaU be entitled to a cross-licence on reasonable 
terms to use the invention claimed in the second patent; and 
(iii) the use authorized in respect of the first patent shall be non-assignable except 
with the assignment of me second patent. 
Article 32 
Revocation/ F orfeiture 
An opportunity for judicial review of any decision to revoke or forfeit a patent shall be 
available. 
Anicle 33 
Term of Porotection 
The term of protection available shall not end before the expiration of a period of twenty 
years counted from the fíling date.8 
'1, is under>tood that tlK>se Membcr; w!úc.h do no! nave,. s)"tem oC original gnl.t'l! may proy¡¿e!ha!:he = of¡:¡ro!Cction sh.all be ccmpu:rd froa: :''le m~-:g 
date in ¡he s)"tcm of originAl gran!. Ariide 34 
Process Patents: Burden of Proof fPlN/l/BWAIIIl 
Page 65 
l. For the purposes of civil proceedings in respect of the infringement ofme rights of the 
owner referred te in paragraph 1 (h) of Anide 28, if the subject matter of a patent is a process 
for obtaining a product, the judicial authorities shall have the authority to order the defendant 
te prove mat me process to obtain an identical product is different from the patented process. 
Therefore, Members shall provide, in at least one of me following circumstances, that any 
identical product when produced without the consent of the patent owner shall, in the absence 
of proof to me contrary, be deemed to ha ve been obtained by me patented process: 
(a) if the product obtained by me patented process is new; 
(b) if there is a substantiallikelihood that the identical product was made by me process 
and the owner ofthe patent has been unab1e mrough reasonable efforts to determine 
the process actually used. 
2. Any member shall be free to pro vide that the burden of proof indicated in paragraph 1 
shall be on me alleged infringer only if me condition referred te in subparagraph (a) is fulfilled 
or only if me condition referred to in subparagraph (b) is fulfilled. 
3. In me adduction of proof to the contrary, the legitimate interests of defendants in 
protecting meir manufacturing and business secrets shan be taken into account. 
SECTION: 6 LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS 
Article 35 
Relation fo the ¡PIe Treaty 
Members agree to provide protection to me layout-designs (topographies) of integrated 
circuits (referred to in this Agreement as "layout-designs") in accordance with Anides 2 
through 7 (otherthan paragraph 3 of Aniele 6), Artiele 12 and paragraph 3 of Artiele 16 of the 
Treaty on Intellectualy Property in Respect of Integrated Circuits and, in addition, to comply 
with me following provisions. 
Article 36 
Scope of/he Protection 
Subject to provisions of paragraph 1 of Aniele 37, Members shall consider unlawful the 
following acts if perforrned without the authorization of the right holder:9 importing, selling, 
or omerwise distributing for commercial purposes a protected layout-design, an imegrated 
circuit in which a protected layout-design is incorporated, or an artide incorporating such an 
integrated circuit only in so far as it continues to contain an unlawfuUy reproduced layout­
designo 
"The I<:rm "righ!: holder" in \hia Section .h.a.J.l be undentood ... hAving \he • ..,.,., meaning ..,. \he I<:rm "holJ.ey oi \he rig.'>!" in \he !PIe Treaty. IP/N/lIBW AlI/] 
Page 66 
Article 37 
Acts No! Requiring the Authorization ofthe Right Holder 
1. Notwithstanding ArticIe 36, no member shall consider unlawful the perfomance of any 
of me acts referred to in mat ArticIe in respect of an integrated circuit incorporating an 
unlawfully reproduced layout-design or any arucIe incorporating suchan integrated circuir 
where the person performing or ordering such acts did not know and had no reasonable ground 
to know. when acquiring the íntegrated circuit or artiele incorporating such an integrated 
circuit, mat ir incorporated an unlawfuHy reproduced layout-designo Members shaH provide 
mat, after the time that such person has received sufficient notice that the layout-design was 
unlawfuUy reproduced, that person may perform any of the acts with respect to the stock on 
hand or ordered before such time, but shall be Hable to pay to the right holder a sum equivalent 
to a reasonable royalty such as would be payable under a freely negotiated licence in respect 
of such a layout-designo 
2. The conditions set out in subparagraphs (a) through (k) of Artiele 31 shall apply mutatis 
mutandis in me event of any non-voluntary licensing of a layout-design or of its use by or for 
the government without me authorization of the right holder. 
Article 38 
Term of Protection 
l. In Members requiring registratíon as a condiuon of protection, the term of protection of 
layout-designs shall not end before the expiration of a period of 10 years coumed from the date 
of filing an application for registration or from the first commercial exploitation wherever in 
the world it occurS. 
2. In Mem bers not requiring registration as a condition for protection,layout-designs shall 
be protected for a term of no lcss than 10 years from the date of the first commercial 
exploitation wherever in the world it occurs. 
3. Notwithstanding paragraphs 1 and 2, a member may, províde that protection shaH lapse 
15 years after the creation of the layout-designo 
SECTION 7: PROTECTION OF UNDISCLOSED 11';'FOR.l\1A TION 
Anide 39 
l. In the course of ensuring effective protection against unfair competition as provided in 
Arucie lObis of the Pans Convention (1967), Members shall protect undisclosed information 
in accordance with paragraph 2 and data submitted to governments or governmental agencies 
in accordance with paragraph 3. 
2. Natural and legal persons shall have the possibility of preventing informauon lawfully 
within their control from being disclosed to, acquired by, or used by others without their 
consent in a manner contrary to honest commercíaI practices10 so long as such informatíon: 
(a) 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 within the 
circies that normaUy deal with the kind of information in question; 
(b) has commercial value because it is secret; and 
(e) has been subject to reasonable steps under the circumstances, by the persoo lawfully 
in control of the information, to keep it secreL 
'·For me purpose of this prevision, "a man.'lI::r contrary to honest corrunercial pncticeg" shall mean al reas: ¡me tices :ruch as breac..~ of """n t;"1ct , breadl of 
confidence and inducement to breach. and includes the acquisition of undisclosed infomu:,an by L"¡rd par.:e.s who kne..." or "'ere gr=:y ncg1 ¡gen: in 
failir,g ro know, mar suc..'1 practice. were ¡¡':lvolved í.'l tl:.e acquisítian. I PINI l/BWAIII 1 
Page 67 
3. Members, when requiring, as a condition of approving the marketing of pharmaceutical 
or of agricultural chemical products which utilize new chemical entities, the submission of 
undisclosed test or other data, the origination of which involves a considerable effon, shall 
protect such data against unfair commercial use. In addition, members shall protect such data 
against disclosure, except where necessary to protect the public, or unless steps are taken to 
ensure that the data are protected againsl unfair commercial use. 
SECTION 8: CONTROL OF ANTI~COMPETITlVE PRACTICES 
IN CONTRACTUAL LICENCES 
Anicle 40 
1. Members agree that sorne licensing practices or conditions pertaining to intellectual 
property rights which restrain competition may have adverse effects on trade and may impede 
me transfer and dissemination of technology. 
2. Nothing in this Agreement shall prevent Members from specifying in their legislation 
licensing practices or conditions that may in particular cases constitute an abuse of intellectual 
property rights having an adverse effect on competiríon in the relevant market. As provided 
aboye, a Member may adopt, consistentiy with the other provisions of this Agreement, 
appropriate measures to prevent or control such practices, which may ínclude for example 
exclusive grantback conditions, conditions preventing challenges to validity and coercive 
package licensing, in the light of the relevant laws and regulations of that member. 
3. Each Member shall en ter, upon request, imo consultations with any other Member which 
has cause to believe that an inteUectual property right owner that is a national or domiciliary 
of the Member to which the request for consultations has been addressed is undertaking 
practices in violation of the requesting Member's laws and regulations on the subject matter 
ofthis section, and which wishes to secure compliance with such legislaríon, without prejudíce 
10 any action under the law and to the fuU freedom of an ultimate decÍsion of eimer Member. 
The Member addressed shall accord fun and sympathetic consideration to, and shall afford 
adequate opportunity for, consultations with the requesting Member, and shall coopera te 
through supply of public1y available non~confidential information of relevance to the matter 
in question and of other information available to the Member, subject to domestic law and to 
me conclusion of mutually satisfactory agreements conceming the safeguarding of its 
confidentiality by me requesting member. 
4. A Member whose nationals or domiciliaries are subject to proceedings in another 
Member conceming alleged violation of that omer member's laws and regulations on the 
subject matter of this section shal1, upon request, be granted an opportunity for consultations 
by the omer Member under the same conditions as those foreseen in paragraph 3. 
PART III 
ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS 
SECTION 1: GENERAL OBLIGATIONS 
Artide 41 
1. Members shaU ensure that enforcement procedures as spedfied in mis Part are available 
under meir law so as to permit effective action against any act of infringemem of imellectual 
property rights covered by this Agreement, including expeditious remedies to prevent 
infringements and remedies which constitute a deterrem to further infringements. These 
procedures shall be applied in such a manner as 10 avoid me creation of barriers to legitimate 
trade and ro pro vide for safeguards against their abuse. IPINIl/BW Afí/l 
Page 68 
2. Procedures concerning the enforcement of inteUectual property rights shall be fair and 
equitable. They shall not be unnecessarily complicated or costIy, or entail unreasonable time­
limits or unwarranted delays. 
3. Decisions on the merits of a case shall preferably be in writing and reasoned. They shall 
be made available al least to the parties to the proceeding wimout undue delay. Decisions on 
the merits of a case shall be based only on evidence in respect of which parties were offered 
the opportunity to be heard. 
4. Parties to a proceeding shaH have an opportunity for review by a judicial authority of 
final administrative decisions and, subject to jurisdictional provisions in a Member' s law con­
cerning the importance of a case, of at least me legal aspects of initial judicial decisions on the 
merits of a case. However, there shall be no obligation to pro vide an opportunity for review 
of acquittals in criminal cases. 
5. It is understood mat mis Part does not create any obligation te put in place a judicial 
system for the enforcement of inteHectual property rights distinct from that for the enforce­
ment of law in general, nor does it affect the capacity of Members to en force their law in 
general. Nothing in this Part creates any obligatíon with respect to me distribution of resources 
as between enforcement of intellectual property rights and the enforcement of law in general. 
SECTION 2: CIVIL AND ADMINISTRATIVE PROCEDURES AND REf'..1EDIES 
Article 42 
Fair and Equitable Procedures 
Members shaH make available to right holdersll civil judicial procedures concerning me 
enforcement of any intellectual property right covered by this Agreement. Defendants shall 
have me right to written notice which is timely and contains sufficient detail, inc1uding the 
basis of the c1aims. Parties shaU be allowed to be represented by independent legal counsel, 
and procedures shall not impose overly burdensome requirements concerning mandatory 
personal appearances. AH parties to such procedures shall be duly entitled to substantiate their 
claims and to present all relevant evidence. The procedure shall provide a means te identify 
and protect confidential informaríon, unless this would be contrary te existing constitutional 
requirements. 
Article 43 
Evidence 
1. The judicial authorities shall have the authority, where a party has presented reasonahly 
available evidence suffident to support its claims and has specified evidence relevanl l(\ 
substantiation of its claims which líes in the control of the opposing party, to order that thi:, 
evidence be produced by the opposing party, subject in appropriate cases to conditions which 
ensure the protection of confidential information. 
2. In cases in which a party to a proceeding voluntarily and without good reason refuses 
acces to, or otherwise does not pro vide necessary information within a reasonable periad, or 
significantly impedes a procedure relating to an enforcement action, a Member may accord 
judicial authorities the authority to make preliminary and final determinations, affirmative or 
negative, on me basis of the ínformation presented to them, including the complaint or me 
alle~ation presented by the party adversely affected by me denial of access to informatíon, 
subJect to providing the parties an opportunity to be heard on the allegatíons or evidence. 
"For !.he ¡out?""" oC thi. Parto !.he !erro "right holder" inc!udes federatioru Ii.l1d ""sociado"" ba.ving leg:..! .:a"iling to ."""rt such rig..'1t3. Article 44 
lnjuctions IPIN/lfBW A/Il1 
Page 69 
l. The judicial amhorities shall have the authority to order a party to desist from an 
infringement, inter alía to prevent the entry into the channels of commerce in their jurisdiction 
of imported goods that involve the infrigement of an intellecmal property right, immediately 
after customs clearance of such goods. Members are not obliged to accord such authority in 
respect ofprotected subject matter acquired or ordered by a person prior to knowing or having 
reasonable grounds to know that dcaling in such subject maner whould entail the infringement 
of an intellectual propeny righe 
2. Notwithstanding the other provisions of this Part and provided that the provisions ofPart 
II specifically addressing use by governments, or by third parties aumorized by a government, 
without the authorization of the right holder are complied with, members may limit the 
remedies available against such use to payment of remuneration in accordance with subpara­
graph (h) of Anide 31. In other cases, the remedies under this Part shall apply or, where these 
remedies are inconsistent with a Member' s law, declaratory judgments and adequate compen­
sation shall be available. 
Article 45 
Darnages 
1. The judicial authorities shall have the authority to order the infringer to pay the right: 
holder damages adequate to compensate for the injury the right holder has suffered because 
of an infringement of that person' s intellectual property right by an infringer who knowingly, 
or with reasonable grounds to know, engaged in infringing activity. 
2. The judicial authorities shall also have the authority te order the infringer te pay the 
right holder expenses, which may include appropriate auorney's fees. In appropriate cases, 
Members may authorize the judicial authorüies to order recovery of profits and/or payment 
of pre-established darnages even where the infringer did not knowingly, or wíth reasonable 
grounds to know, engage in infringing activity. 
Article 46 
Other Remedies 
In order to create an effective deterrent to infringement, the judicial authorities shall have 
the authority to,order that goods thar they have found to be infringing be, without compensa­
tion of any son, disposed of outside the channels of commerce in such a manner as to avoid 
any harro caused to lhe right holder, or, unless this would be contrary ro existing constimtional 
requirements, destroyed. The judicial authorities shall also have the authority to order that 
materials and implements the predominant use of which has been in me creation of the 
infringing goods be, without compensatíon of any SOft, disposed of outside the channels of 
commerce in such a manner as to minimize the risks of further infringements. In considering 
such requests, the need for proponionality between the seriousness of the infringemen t and me 
remedies ordered as weH as the interests of third parties shall be taken into account. In regard 
to comerfeit trademark goods, the simple removal of me trademark unlwafuUy affixed shaU 
not be sufficient, other than in exceptional cases, to perrnit release of the goods into the 
channels of commerce. ¡PIN/l/BWA/IIl 
Page 70 
Anicle 47 
Right of lnformation 
Members rnay provide that the judicial authorities shall ha ve the authority, unless this 
would be out of proportion to the seriousness of the ínfringement, to order the'infringer to 
inforrn the right holder of the identity of third persons involved in the production and 
distríbution of the infringing goods or services and of their channels of distribution. 
Article 48 
lndemnification ofthe Defendant 
1. The judicial authorities shall have the authority to order a pany at whose request 
measures were taken and who has abused enforcement procedures to provide to a party 
wrongfully enjoined or restrained adequate compensation for the injury suffered because of 
such abuse. The judicial authorities shall also have the authority to order the appUcant to pay 
the defendant expenses, which may include appropriate attorney's fees. 
2. In respect of the administration of any law pertaining to the protection or enforcemem 
ofintellectual property rights, Members 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 that law. 
Anicle 49 
Administrative Procedures 
To the extent that any civil remedy can be ordered as a result of admínistative procedures 
on the merits of a case, such procedures shall conform to principIes equivalent in substance 
to those set forth in this Section. 
SECTION 3: PROVISIONAL MEASURES 
Article 50 
1. The judicial authorities shal! have the authority to order prompt and effecti ve provisional 
measures: 
(a) to prevent an infringement of any imellectual property right from occuring, and in 
particular to prevent the entry into the channels of commerce in their jurisddiction of 
goods, including imported goods immediately after customs clearance; 
(b) to preserve relevant evidence in regard to the allged infringement. 
2. The judicial authorities shall have the authority lO adopt provisional measures inaudita 
altera parte where appropriate, in particular where any delay is likely to cause irreparable 
harrn to me right holder, or where there is a demonstrable risk of evidence being destroyed. 
3. The judicial aumorities shall have the authority to require me applícant to provide any 
reasonably available evidence in order to satisfy themselves with a sufficient degree of 
certainty mat me applicant is the right holder and that me applicant's right is being infringed 
or that such ifmingemem is imminent, and LO order the applicant to provide a security or 
equivalent assurance sufficient to protect the defendant and to prevent abuse. IPINIlIBW AIf! 1 
Page 71 
4. Where provisional measures have been adopted inaudita altera parte, the parties 
affected shall be given notiee, without delay after the execution of the measures at the latest. 
A review, including a right lo be heard, shall take place upon request ofthe defendant with a 
view to deciding, within a reasonable period after the notification of the measures, whether 
these measures shall be modífied, revoked or confirmed. 
5. The applicant may be required lO supply omer information necessary for the idenfica­
tion of the goods concerned by the authority that will execute the provisional measures. 
6. Without prejudice to paragraph 4, provisional measures taken on the basis of para­
graphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease lO have 
effeet, if proceedings leading to a deeision on the merits of the case are not initiated within a 
reasonable penod, to be determined by the judicial authority ordering the measures where a 
Member' s law so permits or, in the absence of sueh a determination, not lO exeeed 20 working 
days or 31 calender days, whichever is the longer. 
7. Where me provisional measures are revoked or where they lapse due te any aet or 
omission by the appUcant, or where it is subsequently found that there has been no 
infringemen t or threat of infringement of an intellectual property right, the judicial authorities 
shall have the authority to order the applicant, upon request of the defendant, to provide the 
defendant appropriate compensation for any injury caused by these measures. 
8. To the extent that any provisional measure can be ordered as a result of administrative 
procedures, such procedures shall conform to principIes equivalent in substance to those set 
forth in this Section. 
SECTION 4: SPECIAL REQUIREMENTS RELA 1ED TO BORDER MEASURES12 
Article 51 
Suspension of Release by Customs Authorities 
Members shall, in conformity with the provisions set out below, adopt procedures13 to 
enable a right holder, who has valid grounds for suspecting that the importation of counterfiet 
trademark or pirated copyright goods14 may take place, to lodge an application in writing with 
competent authorities, administrative or judicial, for the suspension by the customs authorities 
ofthe re]ease into free circulation of such goods. Members may enable such an application 10 
be made in respect of goods which inyolve other infringements of intellectual property rights, 
provided that the requirements of this Section are meL Members may also provide for 
corresponding procedures concerning the suspension by fue customs authorities of the realese 
of infringing goods destined for exportation fram their territories. 
"Whcre a Member h&.s dismantlcd substantially al! control. <>ver mavemen! of goods aero$! íts borde~ wi!h another Member wi!h which il formo part oi a 
CUstOl1lll unJan, it .hall DO! be required to apply the provisíollS oC!his Scction al tba! border. 
"I! is understood tba! thcre .hall be no oh! igation lO apply such procedure. to imports oC goods pUl an!he market in a.'1otiler counlry by 01 wi!h!he =t 
oC !he righ! holder, Qr lo goods in transist. 
"For!he purposes oC thi& Agreement: 
(a) "c.ounterfeit lu.demark goods" .hall mean any gcod., including packaging, beuing ",i!hou! au!horiz.o.tian .. tnde=k which t. identical lo the 
lnIdema.rlc vaJidly registered in respect oC .uch goods. or which =01 be distinguisbed in its "ssentW upcCt:! froro such .. trodemarlc., o.nd which 
!hereby infringe. the rights oí the owncr oC !he trademark in qucstian under!he la". oC !he country oC importatian; . 
(1)) "pirateci copyright gO<.'lds" .hall mean ""y goods which lIrC copie. made w ithot!.! the coment oí !he right holder or penen dul y authorized by t."" 
righ! holder in !he coon.tr'y oi prodt!.ctian ond which are roade directly or indirectly frorn on uticlc where the making oí th.at copy ".ould have 
constituted 1m infringemen! oC a copyright ex 1I related righ! under!he law oC the country of importatian. ¡ P/l\U¡/BW AII/I 
Puge 72 
Article 52 
Application 
Any right holder initiatíng the procedures under Artide 51 shaH be required to provide 
adequate evidence to satisfy the competent authorities that, under the laws of the country of 
importation, there is primafacie an infringement of the right holder's inteHectual property 
right and to supply a sufficiently detailed descriptíon of the goods to make them readily 
recognizable by the customs authorities. The competent authoritíes shall inform the applicant 
within a reasonable period whether they have accepted me application and, where determined 
by ú'1e competent authorities, the period for which the customs authorities wiU take acrion. 
Article 53 
Security or Equivalent Assurance 
1. The competent authorities shall have the authority to require an applicant to provide a 
security or equivalent assurance sufficient to protect the defendant and me competent 
authorities and to prevent abuse. S uch security or equivalent assurance shall nOl unreasonably 
deter recourse to these procedures. 
2. Where pursuant to an application under this Section the release of goods involving 
industrial designs, patents, layout-designs or undisdosed information into free circulation has 
been suspended by customs authorities on the basis of a decision other than by a judicial or 
other indpendent authority, and the period provided for in Anide 55 has expired without the 
granting of provisional relíef by the duly empowered authority, and provided that aH orher 
conditions for importaríon have been complied with, the owner, importer, or consignee of such 
goods shall be emitled to their release on the posting of a security in an amount sufficient te 
protect the right holder for any infringement. Payment of such security shall not prejudice any 
other remedy available to the right holder, ir being understood mat the security shall be 
released if the right holder fails to pursue the right of acüon within a reasonable period oftime. 
Article 54 
Notice of Suspension 
The importer and the applicant shaU be promptly notified of the suspension of the release 
of goods according to Article 51. 
Article 55 
Duration ofSuspension 
If, within a period not exceeding 10 working days after the applicant has been served notice 
of the suspension, the customs authorities have not been informed that proceedings leading te 
a decision on the merits of the case have been initiated by a party orher than the defendant, or 
that the duly empowered authority has taken provisional measures prolonging the suspension 
of the release of the goods, the goods shall be released, provided mat aU omer conditions for 
importation or exportation have been complied with; in appropriate cases, this time-limÍt may 
be extended by another 10 working days. 1f proceedings leading to a decision on me merits of 
the case have been initiated, a review, incIuding a right to be heard, shall take place upon 
request of the defendant with a view to deciding, within a reasonable periad, whemer these 
measures shaU be modified, revoked or confirmed. Notwithstanding the above, where the 
suspension of me release of goods is carried out or continued in accordance wim a provisional 
judicial measure, the provisions of paragraph 6 of Artide 50 shaIl apply. Anide 56 
lndemnifieation ojthe Importer 
and of the Owner oj the Goods IP/NI lIBW Alfil 
Page 73 
Relevant authorities shal1 have the authority te order the applicant te pay the importer, the 
consignee and the owner of the goods appropriate compensation for any injury caused to them 
through the wrongful detemion of goods or through the detention of goods released pursuam 
to .<\rtide 55. 
Anide 57 
Right of Inspection and Information 
Without prejudice to the protection of con fiden tial informaition, Members shaH providc the 
competent authorities the authority to give the right holder sufficient opportunity to have any 
goods detained by me customs aumorities inspected in order te substamiate the right holdcr's 
claims. The competent authorities shall also have authority to give the importer an equivalem 
opportunity to have any such goods inspected. Where a positive determinarion has been made 
on the merits of a case, Members may provide the competent aumorities 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. 
Anicle 58 
Ex Officio Aetion 
Where Members require competent authorities to act upon their own initiative and to 
suspend the release of goods in respect of which they have acquired prima jacie evidence that 
an imellectual property right is being infringed: 
(a) the competem authorities may at any time seek fmm the right holder any information 
that may asssist them to exercise these powers; 
(b) the importer and the right holder shall be promptly notified of the suspension. Where 
the importer has lodged an appeal against the suspension with the competent aumori­
ties, the suspension shall be subject to the conditions, mutatis mutandis, set out at 
Anide 55; 
(e) Members shaU only exempt both public aumorities and officials from liability to 
appmpriate remedial measures where actions are taken or intended in good faith. 
Article 59 
Remedies 
Wimout prejudice to other rights of action open te the right holder and subject to the right 
of me defendant to seek review by a judicial authority, competent authorities shall have the 
authority 10 order the destruction or disposal of infringing goods in accordance wim me 
principIes set out in Article 46. In regard to conterfeit trademark goods, the aumorities 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 circumstatnces. 1 PINI lIBWAIU 1 
Page 74 
Article 60 
De Minimis lmports 
Members may exc1ude from the application of the aboye provisions smaH quantities of 
goods of a non-commercial nature contained in travellers' personalluggage or sent in small 
consignments. 
SECTION 5: CRIMINAL PROCEDURES 
Article 61 
Members shaH provide for criminal procedures and penalties to be applied at least in cases 
of wilful trademark counterfeiting oro copyright piracy on a commercial scale. Remedies 
available shall inelude imprisonment and/or monetary fines sufficient to provide a deterrent, 
consistently with the level of penalties applied for crimes of a corresponding gravity. In 
appropriate cases, remedies available shall also ¡nelude the seizure, forteiture and destruction 
of the infringing goods and of any materials and implements the predominant use ofwhich has 
been in the commission of me offence. Members may provide for criminal prodedures and 
penalties to be applied in other cases of ínfringement of intellectual property rights, in 
particular where they are committed wilfully and on a commercial scale. 
PARTIV 
ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY 
RIGHTS AND RELA TED INTER-P ARTES PROCEDURES 
Article 62 
l. Members may require, as a condition of the aquisition or maintenance of me intellectual 
property rights provided for under Sections 2 through 6 ofPart Ir, compliance with reasonable 
procedures and formalities. Such procedures and formalities shall be consistent with the 
provisions of this Agreement. 
2. Where the acquisition of an intellectual property right is subject to the right being 
granted or registered, Members shall ensure that the procedures for grant or registration, 
subject to compliance with the substantive conditions for acquisition of the right, permit the 
granting or registration of the right within a reasonable period of time so as to avoíd 
UI1warranted curtailment of the period of protection. 
3. Anide 4 of the Paris Convention (1967) shall apply mutatis nw.:andis to service marks. 
4. Procedures conceming the acquisition or maintenance of intdlecrual property rights 
and, where a Member' s law provides for such procedures, administratíve revocarion and intCT 
partes procedures such as opposition, revocation, cancellation, shall be governed by the 
general principIes set out in pragraphs 2 and 3 of Anic1e 41. 
5. Final administrative decisíons in any of the procedures referred to under paragraph 4 
shaU be subject to review by ajudicial or quasi-judicial aUlhority. Hcwever, there shall be no 
obligation to provide an opportunity for such review of decisions in cases ol' unsuccessful 
opposition or administrative revocation, provided that the grounds for such procedures can be 
the subject ol' invalidation procedures. PARTV 
DISPUTE PREVENTION AND SETTLE}'lEi'~l 
Article 63 
Transparency IPIN/l/BWAII/l 
Page 75 
1. Lawsand regulalÍons, and final judicial decisions and administraLÍve rulings of gener:11 
application, made effective by a Member pertaining to the subject matter of this Agreemcnt 
(the availability, scope, acquisítion, enforcement and prevention of the abuse of intcllectual 
propeny rights) shall be published, or where such publication is not practicable made publicly 
available, in a nationallanguage, in such a manner as to enable governmcnts and right holders 
to become acquainte{i with them. Agreements concerning!he subject matterofthis Agrcement 
which are in force between the government or a governmental agency of a Member and the 
government or a governmental agency of another Member shall also be published. 
2. Members shall notífy the laws and regulations refcrred to in paragraph 1 to !he Council 
for TRIPS in order to assist !hat Council in its review of the operation of this Agreement. The 
Council shall attempt to minimize the burden on Members in ca.rrying out this obligation and 
may decide to waive !he obligation to notify sueh laws and regulations direetly to lhe Council 
if consultations with WIPO on the establishment of a common register containing these lav.,ls 
and regulations are successful. The Council shall also consider in !his cooneedon any acüon 
required regarding notifications pursuant te lhe obligations under this Agreement stemming 
from !he provisions of Anicle 6ter of t,he París Convention (1967). 
3. Each Member shall be prepared to supply, in response to a wrinen request from another 
Member, infonnation of the son referred to in paragraph 1. A Member, having reason to 
believe that a specifie judicial deeision or admini'strative ruling or bilateral agreement in the 
area of inteIlectual propeny rights affeets its right under this Agreement, may also request in 
wríting to be given aecess to or be infonned in sufficient detail of sueh speeific Judicial 
decisions or administrative rulings or bilateral agreements. 
4. Nothing in paragraph 1,2 and 3 shall require Members to disclose confidentíal infonna­
lion whieh would impede law enforcement or otherwise be contrary te the pubEc interest or 
would prejudiee the legitimate commereial interests of particular enterprises, public or 
private. 
Article 64 
Dispute Seulement 
l. The provisions of Articles XXII and XXIII of GA TI 1994 as elaborated and applied by 
the Dispute Settlement Understanding shall apply lO consultations and the seulement of 
disputes under this Agreement except as otherwise speeifieally provided herein. 
2. Subparagraphs l(h) and 1 (e) of Anide XXIII of GA TI 1994 shal1 not apply to the 
settlement of disputes under this Agreemcnt for a period of five years from lhe date of entry 
inta force of the WTO Agreement. 
3. During the time period referred te in paragraph 2, the Couneil for TRIPS shall examine 
rhe scope and modalities forcomplaims of!he type provided for under subparagraphs l(h) and 
l(c) of Aniele XXIn of GA TI 1994 made pursuant to ihis Agreement, and submit its 
recommendations to the Ministerial Conference for approvaL Any decision of lhe Ministerial 
Conference to approve such reeommendations or to-~tend the period in paragraph 2 shall be 
made only by consensus, and approved rccommendations shall be effective for aH Members 
without funher fonnal acceptance proccss. íPINIIIBWA/I11 
Page 76 
PARTVl 
TRANSITIONAL ARRANGE!víENTS 
Article 65 
Transitional Arrangements 
1. Subject to the provisions ofparagraphs 2,3 and 4, no Member shall be obliged to apply 
the provisions of this Agreement before the expiry of a general period of one year following 
the date of entry into force of the \VTO Agreement. 
2. A developing country Member is entitled lO delay for a further period of fom years the 
date of application, as defined in paragraph 1, of the provisions of this Agreement other than 
Articles, 3,4 and 5. 
3. Any other Member which is in the process of trans forrnatio n from a centrally-planncd 
into a market, free-enterprise economy and which is undenaking structmal reforrn of its in­
tellectual property system and facing special problems in the preparation and implcmentation 
of intellectual property laws and regulations, may also bcnefit from a period of delay as 
foreseen in paragraph 2. 
4. To the extent that a developing country Member is obliged by this Agreement to extend 
product patent protection lO areas of technology nol so protectable in its territory on the general 
date of application of this Agreement for that Member, as defined in paragraph 2, it may delay 
the application of the provisions on product patents of Section 5 of Part II to such areas of 
technology for an additional period of five years. 
5. A Member availing itself of a transitiona1 penod under paragraphs, 1, 2, 3 or 4 shall 
ensure that any changes in its laws, regulatiofls and practice made during that period do flOt 
result in a lesser degree of consistency with the provisions of this Agreement. 
Anicle 66 
Least-Developed Country Members 
1. In v iew of the special needs and req uirements of least-developed country Mem bers, their 
economic, financial and administrati ve constraints, and their nced for flexibility to create a 
viable technological base, such Members shall not be required to apply the provisions of this 
Agreemem, other than Anides 3,4 and 5, for a period of 10 years from the date of application 
as defined under paragraph 1 of Anide 65. The Council forTRIPS shall, upon duly motivated 
request by a least-developed country fvlember, accord extensions of this periodo 
2. Developed country Members, shall provide incentives to enterprises and institutions in 
their territories for the purpose of promoting and encouraging tcchnology üansfcr to lcast­
developed country Members in arder to enable them to create a sound and viable technological 
base. 
Anicle 67 
Technical Cooperation 
In order lO facilitate the implememation of this Agreemem, developed country r-,'1embers 
shall provide, on request and on mutually agreed terms and conditions, technical and financia! 
cooperation in favour of developing and least-developed country tvlembers. S uch cooperaLion 
shall inelude assistance in the preparatíon of laws and regulations on the protection and 
enforcemem of intdlectual propeny rights as well as on the prevemion of th~ir abuse, and shal! 
include support regardíng the establishment orreinforcement of domestíc offices and agencies 
relevam to these mauers, induding the training of personnel. PART VII IPIN/lIBWAlIIl 
Page 77 
IKSTITUTIONAL ARRANGElvIENTS; FINAL PROVISIONS 
Anicle 68 
Council for Trade-Related Aspects of 
Intellectual Property Rights 
The Council fm TRIPS shall monitor the operation oC this Agreement and, in particular, 
Members' compliance with thcir obligations hereundcr, and shall afford Members the 
opportunity of consulting on maucrs relating to the trade-related aspects of imellectual 
property rights. It sha11 carry out such olher responsibilities as assigned to it by the Members, 
and it sha11, in partícular, províde any assistance requested by them in the context of dispLtte 
settlement procedures. In carrying out its functions, the Council for TRIPS may consult with 
and seek informatíon from any source it deems appropriate. In consultation with WIPO, the 
Council shall seek to establish, within one year of ilS first meeting, appropriate arrangements 
for cooperation \\'ith bodies of that Organization. 
Anide 69 
International Cooperarion 
Members agree to cooperate with each olher with a vicw to eliminating international trade 
in goods infringing intellectual property rights. For this purpose, they shall establish and notify 
contact points in their administrations and be ready to exchange inform3tion on trade in 
infringing goods. They shall in particular, promote the cxchange of information and coopera­
ríon between customs authorities with rcgard to trade in counterfeit trademark goods and 
pirated copyright goods. 
Article 70 
Protection of Existing Su.bjecI Malter 
l. This Agreemem does not give rise to obligations in respect of acts which occurred before 
the date of application of the Agreement for lhe Member in question. 
2. Except as otherwise provided for in this Agreemem, this Agreemem gives rise to 
obligations in respect of all subject matter existing at the date of application of this Agreement 
for the Member in question, and which is protected in that Member on the saíd date, or which 
meets or comes subsequently to meet the criteria for protection under the terms of mis 
Agreement. In respect of this paragraph and paragraphs 3 and 4, copyright obligations wilh 
respect to existing works shall be solely dctermined undcr Article 18 of the Berne Convention 
(1971), and obligations with respect to me rights ofproducers ofphonograms and perform.ers 
in existing phonograms shall be determined soleIy under Artide 18 of the Berne Conventlon 
(1971) as made applicable under paragraph 6 of Anide 14 of this Agreement. 
3. There shalI be no obligation to restore protection to subject matter whích on the date of 
application of lhis Agreement for thc Mcmber in question has fallen ¡nto lhe public domain. IPIN/I/BWA/I11 
Page 78 
4. In respect of 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 respectofwhich a significant investment was made, before 
the date ofacceptance ofthe WTO Agreementby that Member, any Member may provide for 
a limitation of the remedies available to the right holder as lo the continued performance of 
such acts after the date of application of the Agreement for that Member. In such cases the 
Member shall, however, at least provide for the payment of equ.itable remu.neration. 
5. A Member is not obliged to apply the provisíons of Anicle 11 and of paragraph 4 of 
Article 14 with respect to originals or copies purchased prior to the date of applícation of thc 
Agreement for that Member. 
6. Members shall not be required lO apply Artiele 31, or the requirement in paragraph 1 
of Anide 27 that patent rights shall be enjoyable without discrimination as lO 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 date this Agreemem became known. 
7. In the case of inteHectual property rights for which protection is conditional upon 
regisuation, applications for protection which are pending on the date of application of this 
Agreement for the Member in questíon shall be permitted to be amended to elaim an)' 
enhanced protection provided under the provisions of this Agreement. Such amendments shall 
nol inelude new matter. 
8. Where a Member does not makc available as ofthe date of ent.ry imo force ofthe WTO 
Agreemem parent protection for pharmaceutical and agricultural chemichal products com­
mensurate with its obligations under Anide 27, that Member, shall: 
(a) notwithstanding the provisions ofPart VI, provide as from the date of enuy force of the 
WTO Agreement a means by which applications for patems for such invctions can be 
filed; 
(b) apply lO these applications, as of the date of application of lhis Agreement, the criteria 
for patentanbility as laid down in this Agreement as if those eriteria were being applied 
on fue date of filing in that r,'1embcr or, where priority 1S available and daimed, the 
priority date of the application; and 
(e) pro vide patent protection in accordance with this Agreement as from the grant of the 
patent and for the remainder of the patent term, eounted [rom lhe filing date in 
accordance with Anicle 33 01' this Agreemcnt, for those 01' these applieations that 
meet the critería for proteetion referred lo in subparagraph (b). 
9. \Vhcre a product is the subject of a patcnt application in a Mcmbcr in aecordanee with 
paragraph 8(a), exclusive marketing ríghts shall be granted, notwithst3nding the provisions of 
Pan VI, for a period of five years after obtaining marketing approval in thar Member or until 
a product patent is granted or rejectcd in that Mcmber, \vhichever pcríed is shorter, pro\'ided 
that, subsequent lo the entry into fmee of the WTO Agrcement, a patent application has been 
filed and a patentgmnted fer tDat produet in anether Mcmbcr and marketing approval abt3íned 
in such mher Membcr. 
AnicIe 71 
Review and Amendmen: 
1. The Council for TRIPS shall review the implementatíon of lhis Agreement after the 
expiration ofthe uansítional period referred to in paragraph 2 of Anicle 65. The Couneil shall, 
having regard to theexperience gained in its implementation, review it t\VO yeas afterthatdate, 
and al idemical intervals thereafter. The Couneil may also underwke rcviews in the light of 
any relvant new developments whieh might warrant modification or amendmcnt of this 
Agreement. IPIN/lIBWA/lll 
Puge 79 
2. Amendments mere!y serving the purpose of adjusting to higher levels of proteetion of 
intelleetual property rights achieved, and in force, in Olher multilateral agreements and 
acepted under those agreements by all Members ofthe WTO may be referred to the Ministerial 
Conference for action in aceordance with paragraph 6 of Anicle X of the WTO Agreement on 
the basis of a consensus proposal from the Council for TRIPS. 
Article 72 
Reservations 
Reservauons may not be entcred in respecl of any of the provisions of this Agreemem 
without the consent of the othcr Members. 
Anicle 73 
Security Exceptions 
Nothing in mis Agreement shaU be eonstrued: 
(a) to require a Member to furnish any information the disclosure of which ir considers 
eontrary to its essential seeurity interests; or 
(b) to prevent a Member [rom taking any action which it considers neeessary for the 
proteetion of ilS essential seeurity interests; or 
(i) relating to fissionable materials or the materials from which they are deríved; 
(ii) relating to the traffie in arms, ammunition and implements of war and to such 
traffie in other goods and materials as is earried on direetly or indirectly for the 
purpose of supplying a military establishment; 
(iii) taken in time of war or othcr emergency in íntemational relations; or 
(e) to prevent a Member from taking any aeuon in pursuanee of its obligations under the 
United Nations Chartcr for the maintenance of imernational peace and security. 
PASSED by the National Assembly 23rd day of July, 1996. 
c.T. MOMPEI, 
Clerk ofrhe National Assembly. IP/N/lIBWAIIIl 
Page 80 
Republic of Botswana 
INDUSTRIAL PROPERTY (AMENDMENT) 
A T,1997 
Price Pl,OO 
Print~d by the Government Printc:r. Gaborone IPINII/BWAIIIl 
Page 81 
INDUSTRIAL PROPERTY (AMENDMENT) ACT, 1997 
No. 19 
ARRfu~GEMENTOFSECTIONS 
SECTION 
1. Short title 
2. Amendment of secuon 2 of Act No. 14 of 1996 
3. Amendment of section 9 of the Act 
4. Amendment of section 13 of the Act 
5. Amendment of section 22 of the Act 
6. Amendment of section 24 of the Act 
7. Amendment of section 25 of the Act 
8. Amendment of section 35 of the Act 
9. Amendment of section 63 of the Act 
10. Repeal of section 80 of the Act 
1 L Amendment of section 81 of the Act 
An Act to amend the Industrial Property Act (No. 14 of 1996) 
Date of Assent: 4th November, 1997. 
Date commencement: By Notice. 
ENACTED by the Parliament of Botswana. 
1. This Act may be cited as the Industrial Property (Amendment) Act, 
1997. 
2. The Industrial Property Act (No. 14 of 1996) (hereinafter referred 
to as "me Act") is amended in section 2 mereof by substituting, for me 
definition of me word "ARIPO" which appears merein, me following 
new definition -
" "ARIPO" means the African Regional Industrial Property Organi­
zation;". 
3. Section 9 of the Act is amended in subsection (1) thereof by -
Ca) substituting, for paragraph (j) mereof, me following new para­
graph-
., (j) di agnostic , therapeutic and surgical methods for the treat­
ment of humans and animals; " and 
(b) by repealing paragraph (g) thereof. 
4. The Act is amended by substituting, for section 13 thereof, the 
following new section -
"Application 13. (1) Every application for a patent shall be filed with 
fer a patent the Registrar and shall contain a request, a description, one 
or more claims, dra wings (where required by the Registrar of1997 
Short title 
Amendment 
ef section 2 of 
Act No. 14 
of19% 
Amendment 
of section 
9 of!he Act 
Amendment 
oE section 
13 of!he Acr. íP/N1lIBWAIrI1 
Page 82 
Amendment 
ofsection 
22 of fue Act in terms ofsubsection (5)) and an abstract in me prescribed 
form, and shall be accompanied by such fee as may be 
prescribed. 
(2) (a) The request shall contain a petition that a patent 
be granted, the name of and omer prescribed information 
concerning me appUcant, me inventor and me agent, if any, 
and me title of me invention. 
(b) Where the appUcant 1S not the inventor, the request 
shall be accompanied by a statement justifying the appli­
cant's right to the patent. 
(3) The description shall disclose me invention in a 
manner wruch is sufficiently clear and complete to permit 
a person having ordinary skill in the art lO carry out the 
invention, and shall indicate at least one mode known to me 
appUcant in wruch the invention can be performed. 
(4) (a) The claim or claims shaU defme the matter for 
wruch protection is sought, and the description and any 
drawings filed may be used to interpret such claim or 
claims. 
(b) The claims shall be clear and concise and shall be 
fully supported by me description. 
(5) The Registrar may require an appUcant to file draw­
ings where mese are necessary for me understanding ofme 
invention. 
(6) The abstraet shall not be taken into account for the 
purpose of interprcting the scope of the protection; it shall 
merely serve as technical information. 
(7) An appUcant may, at any time before the patent is 
granted, withdra w rus application." 
5. Section 22 of the Act is amended by substituting. therefor, the 
following new section -
"Examination 22 (1) After according a filing date, the Registrar shall 
of applications examine whether the application eomplies with the re-
quirements of section 13 (1) and (2) and the regulations 
pertaining thereto, and with those requirements of this 
Act and the regulations which are designated by me regu­
lations as formal requirements forthe purposes ofthis Act. 
and whether the information requested under section 20. if 
any. has been provided. 
(2) Where the Registrar is ofthe opinion that the appli­
cation complies with the requirements indicated in 
subsection (1), he shall cause the application to be exam­
ined lO determine whether the claimed subject matter con­
stitutes an invention in terms of section 2 and whether 
therequirementsofsections 8,9,13(3),13(4),13(5) and 
15, and the regulations pertaining thereto have been satis­
fied. íPIN11/BWAIII1 
Page 83 
(3) The :\1inister may, by regulations, prescribe the 
categories of inventions in respect of which an examination 
under this section shall not cover the requirements of 
novelty and invcnti ve step." 
6. Section 24 ofthe Act is amended by substituting, for subsection (3) 
(a) (H) thereof, the following new subsection -
"(ti) the use of anicles on aircraft, land vehicles orvessels of oLher 
countries \\'ruch temporarily or accidentally enter the air 
space, territory or waters of Botswana,". 
7. Section 25 ofthe Act is amended by insening therein, irnrnediately 
after subsection (5) thereof, the following new subsection-
"(6) (a) In any procecdings forinfringement, other than criminal 
proceedings, where the subject matter of the patent 1S a process [or 
obtaining a produce the burden of establishing that the product was 
not made by the process shall rest on the defendant if-
(i) the product is new, or 
(H) a substantiallikelihood exists that the product was made by 
the process and the owner of the patent has been unable, 
through reasonable effons, to determine the process used. 
(b) In requiring the production of evidence, the coun shall take 
into account the legitimate interests ofthe defendant in not disclos­
ing rus manufacturing secrets." 
8. Section 35 of the Act is amcnded by substituting, for thc words 
"section 22(2) which appearin subscction (2) thcreof, the words "scction 
22(3)". 
9. Section 63 ofthe Act i5 amended by substituting, for the words "A 
person" wruch appear in subsection (1) thereof, the words "Any inter­
ested person". 
10. Section 80 of the Act 15 hereby repea!ed. 
11. Section 81 of the Act is amended -
(a) byinserting, immediately aftersubsection(2) thereof, the follow-
ing new subsection -
"(3A) For the purposes of the payment of annua! maintenance fces 
for patents and patent applications, and of rcnewal fees for regis­
tered industrial designs undcr subscction (2) hercof, the reference 
to "me filing date" in sections 27 (2) and 49 (1) respectively, shall 
be construed as being a refcrence to the date of registration in 
Botswana."; and 
(b) by substituting, for subsection (4) thereof, the following new 
su bsection -
"( 4) A person who, on the corning into entry of this Act-
(a) is the ownerofa patentgranted in the UnitedKingdom orthe 
Republic of South Africa or has filed an application for the 
grant of a patent in me United Kingdom or the Republic of 
South Africa; or Amendment 
of section 
24 of me Act 
Amendment 
of section 
25 of me Act 
Amendment 
of section 
35 of me Act 
Amendment 
of section 
63 of me Act 
Repealof 
section 80 of 
me Act 
Amendment 
of section 
81 of me Act IPlNllIBWAlI/l 
Page 84 
(b) is !he owner of an industrial design registered in !he 
United Kingdom or !he Republic of Sou!h Africahas filed 
an application for registration of an industrial design in !he 
United Kingdom or!he Republic of South Africa 
may. within 20 months of !he entry into force of this Act, file an 
application for the grant of a patent for the same invention or for the 
registration of!he same industrial design under this Act and such 
application shall be accorded the filing date or priority date 
accorded to !he application. grant or registration in !he United 
Kingdom or the Republic of South Africa." 
PASSED by !he Nationa! Assembly this 14!h day of August, 1997. 
C.T. MOMPEI, 
Clerk ofthe National Assembly.