RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q/MAC/1
IP/Q2/MAC/1
IP/Q3/MAC/1
IP/Q4/MAC/1
18 August 2000
(00-3339)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
MACAU, CHINA1
The present document reproduces the introductory statement made by the delegation of
Macau, China, the questions put to it and the responses given in connection with the review of
legislation undertaken at the Council's meeting of 26-29 June 2000.2  It also reproduces the statement
made by the delegation of Macau, China at the end of the review of its legislation.
_______________
I. INTRODUCTORY STATEMENT
The legal system of Macau, China belongs to the Civil Law family.  This is due to the fact
that Macau was administered by Portugal from the 16th century until 19 December 1999.  On thatdate, following a treaty signed in 1987 between China and Portugal, the Sino-Portuguese Joint
Declaration, the territory reverted to Chinese administration, being now one of the two Special
Administrative Regions ("SAR") of  the People's Republic of China.
A SAR is a legal entity endowed with a larg e degree of autonomy, namely with local
legislative, executive and judicial powers.  The political status of Macau, China is embodied in the
Basic Law, a constitutional statute adopted in 1983 by the National People's Congress of China andwhich entered into force on 20 December 1999, simultaneously with the resumption of administration
by China.  The Basic Law is thus the dome of the Macau, China legal system.
Being a Civil Law legal system of Portuguese descent, the law in Macau, China is naturally
codified, i.e. anchored around a few codes that contain the main disciplines in each legal branch: theCivil Code, the Civil Procedure Code, the Crimin al Code, the Criminal Procedure Code and the
Commercial Code are certainly the most important ones.
All the codes now in force, as well as many other statutes, were enacted in the 1990s,
especially in the second half of the 1990s, due to an effort of legislative modernization undertaken bythe local authorities as a preparation for the transference of administration.
This effort of modernization comprehended the intellectual property law as well, namely to
make it compatible with the TRIPS Agreement.
                                                     
1 As regards laws and regulations notified by Macau, China under Article 63.2 of the Agreement,
reference is made to documents IP/N/1/MAC/1/Rev.1 and Rev.1/Add.1, IP/N/1/MAC/C/1/Rev.1,IP/N/1/MAC/I/1 and 2, IP/N/1/MAC/T/1 and 2 and IP/N/6/MAC/1.
2 The minutes of this meeting have been circulated as document IP/C/M/27.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 2
When the WTO  Agreement was signed in 1994, Macau law followed the 1948 Brussels Act
of the Berne Convention for the Protection of Literary and Artistic Works and the 1967 Stockholm
Act of the Paris Convention for the Protection of Industrial Property.  There was also already
protection for producers of phonograms and videograms.  Macau had to upgrade its law in order tobecome TRIPS-compatible, and sometimes it did more than was required by the TRIPS Agreement.
Intellectual property in Macau, China is traditionally separated into two main areas and two
main statutes:  the Copyright and Neighbouring Ri ghts Law on one side and the Industrial Property
Law on the other side.
The current Copyright and Neighbouring Rights Law was published in August 1999 and
reflects a droit d'auteur philosophy.  It also comprehends the protection of performers, producers of
phonograms and videograms and broadcasting organizations but, as is typical of droit d'auteur
systems, the border between rights of authors and neighbouring rights is clear.
Among the major alterations that we had to make to the law previously in force, I would
stress the introduction of the performers' and broadcasters' rights, as well as the explicit statement that
software and databases are protected by copyright, although this protection of software and databases
was already implied in the old legislation.
The Copyright and Neighbouring Rights Law is complemented by a statute also enacted in
1999, the Decree Law 51/99/M, of 27 September, that regulates exclusively the manufacture and trade
of optical discs.
The Industrial Property Law was published in December 1999.  It comprehends all IP rights
dependent on registration including the layout-designs of integrated circuits which are for the firsttime protected in Macau, China and are protected by a sui generis right.
The only matter in Part II of the TRIPS  Agreement that is neither in the Copyright and
Neighbouring Rights Law nor in the Industrial Property Law is the protection of undisclosed
information, which in Macau, China is protected under the rules on unfair competition in the
Commercial Code.
The IP legislation mentioned above is complemented by other legislation that is not
specifically dedicated to IP.  As a matter of fact, since our legal system is a Civil Law one, the IP
legislation does not contain all the law that is relevant to intellectual property but only that which is
exclusively intellectual property.
For the aspects that are not exclusively IP we must refer to more general legislation, namely
the five Codes mentioned above.  For example, you will not find a line about civil actions in Macau,
China's intellectual property legislation because the subject is already regulated in the civil procedure
law.  To repeat it in the IP legislation would be considered a redundancy and, as such, a technical
mistake.
This feature may be obvious to Civil Law lawyers but, according to my experience, it is often
difficult for fellow lawyers from the common law countries to understand and has created
misunderstandings with some of our trading partners.  I therefore give this explanation here.
As a consequence of what I said, the compatibility of our law with the TRIPS Agreement
must be evaluated after taking into consider ation much more than the main intellectual
property-dedicated legislation.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 3
In general we can say that intellectual property in Macau, China, as in many other legal
systems, has a three-tiered protection: it is simultaneously protected by civil law, criminal law and
administrative law.
1. IP in Macau, China is protected by civil law since, for every exclusive right granted
by IP law, the legal system grants also to the owner of that right the means necessary to
enforce it coercively and to repair its infringement.
2.  IP is protected by criminal law as many of the forms of infringement typically the
non-authorized reproduction or trade in a commercial scale, are punished with criminal
penalties.
3. Finally, IP is protected by administrative law to the extent that many collateral
obligations are established in the law whose in fringement has an administrative nature and
which are punished with administrative measures, e.g., the obligation to use the SID code in
optical discs.
The three layers of legal protection may certainly overlap in practice but they do not exclude
each other.
Following this sketch of municipal law, I would like to tell you that, besides the TRIPS
Agreement, the following treaties are applicable to Macau, China:  the Berne Convention (Paris Act
of 1971), the Universal Copyright Convention (Paris  Act of 1971), the Paris Convention on Industrial
Property (Stockholm Act of 1967), the Madrid Agreement on International Registration of
Trademarks (Stockholm Act of 1967) and the Nice Agreement on the International Classification of
Products and Services (Geneva Act of 1977).
As Macau, China is not a State, the application of the conventions that only accept States as
members was previously achieved through the membership of Portugal.  Before the resumption of
sovereignty, China agreed with Portugal to succeed in the position of the latter regarding the
application of such conventions to Macau, China.
On the subject of international conventions, let me stress that, according to a general principle
of our legal system, they prevail over the municipal law.
Although, as I said above, almost all the le gislation now in force was enacted during the
second half of the 1990s, the IP law that we have is no more than the natural evolution of legislation
that has been applicable to Macau, China for many decades.  Nevertheless, despite having legislationin place for a long time, experience of IP practice is rather scarce in Macau, China.  I can list several
reasons for this:
1. Firstly, as you easily understand, Macau, China is a small producer of IP
subject-matter and also a small market for subject-matter.  We are talking about a territory ofabout 20 square kilometres and less than 500 000 inhabitants.  Consequently litigation has
been scarce and there are naturally few attorneys, few magistrates and even few government
officers knowledgeable in IP;
2. Moreover, there was not until very recently any entity in Macau, China that
represented right holders that could help to raise their awareness and at the same time enforce
their rights and those of foreign right holders.  Finally, with substantial help given by the
Administration, one association was established at the end of 1999.  However, that
association is still taking its first steps and we will have to wait to see how successful their
work will be;IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 4
3. Finally, up until 1995, the industrial property rights existing in Macau, China were
simply an extension of registrations made in Lisbon.  In 1995 a local registration was
established for trademarks only, while the local registration of the other industrial propertyrights, namely patents, it was only possible after the entry into force of the 1999 Industrial
Property Law.  Consequently until now, apart from trademarks, we have not dealt directly
with the registration of patents or other industrial property rights and this is certainly a field
where we lack experience and where we have to learn.
After this very brief overview of the Macau legal system, I would like to finish with a
comment on our replies to the questions posed by WTO Members.  We received 10 questions fromJapan, 43 from the European Communities and their member States, 67 from the United States and 2
from Canada, making a total of 122 questions received between 5 May and 15 June.
We hope to have been clear in our replies but we stress that we had to hurry in writing them
because we are understaffed and all the questions were sent to us after the 17 April deadline.  In anyevent, we managed to reply to all the questions before this meeting and we would like that this effort
of ours was taken as evidence of the commitment of the Macau government to compliance with its
international obligations, in the protection of intellectual property and in the fight against piracy.
II. RESPONSES TO QUESTIONS POSED BY CANADA
1. What recourse do right holders have in respect of wilful trademark counterfeiting or
copyright piracy on a commercial scale, as required by Article 61?
According to Article 291 ° of the Industrial Property Law, wilful trademark counterfeiting on
a commercial scale is a crime punishable with imprisonment up to three years or fine between 80 and180 "days".
Copyright piracy on a commercial scale is also  a crime.  The unauthorized reproduction of
protected subject-matter is punishable with imprisonment between one and four years while the trade
of non-authorized copies is punishable with imprisonment up to three years or fine up to 240 "days"
(Copyright and Neighbouring Rights Law, Articles 211 ° and 212 °).
A "day" of a fine is a unit established by the court between 50 and 10 000 MOP, the Macau
currency (Criminal Code, Article 45 °).
Prosecution for the above crimes does not depend on complaint or private accusation.
2. What protection does your copyright legislation afford to foreign works?
We may summarize the protection granted to non- resident authors as follows (Copyright and
Neighbouring Rights Law, Articles 49 °-54°, and Civil Code, Article 1 °, 3):
(a) generally non-resident authors enjoy the same protection that is granted to the
resident authors provided there is reciprocity;
(b) full protection, irrespective of the place of residence or reciprocity, is granted to the
authors of:
(i) works published for the first time, or simultaneously, in Macau;IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 5
(ii) works of architecture built in Macau;
(iii) artistic works embodied in a building located in Macau;(iv) audio-visual works produced by residents in Macau, irrespective of who is 
the author.
(c) whenever something different from what is said above results from an international
convention applicable in Macau, the latter prevails.  Consequently the nationals of
WTO members are granted national treatment (i.e. the treatment granted to residents).
III. RESPONSES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
A. COPYRIGHT AND RELATED RIGHTS
1. What is the basis in the TRIPS Agreement fo r the limitations or exceptions to rights of
assignees of copyright contained in Chapter V of the Copyright Decree, especially as specified in
Articles 36 and 38 of the Decree?
The question seemingly assumes that the said limitations infringe obligations or contravene
prohibitions in the TRIPS Agreement but does not identify the concerned obligations or prohibitions.We do not find any infringement of the TRIPS obligations.
Follow-up questions:
A. In light of the broad rights conferred  by the TRIPS Agreement and the Berne
Convention on right holders and the restricted te rms of exceptions contained in Article 13 of the
TRIPS Agreement to "special cases which do not conflict with a normal exploitation of the
work…", what is the basis for residual rights granted to "the intellectual creator or his
successor" to claim against "manifestly disproportionate" profits of the assignee, as provided in
Copyright Decree Article 36 or for fulfilment of the "reasonable needs of the public" as
specified in the Copyright Decree Article 38?
Article 13 of the TRIPS Agreement does not make clear what should be understood as
"normal exploitation of the work" or "unreasonable prejudice to the legitimate interests of the rightholder" and much freedom is consequently left for the national legislator.  We understand that the
article must be construed in harmony with the principles set out in Article 7 of the TRIPS Agreement.
The protection of the intellectual creator being the first aim of the droit d'auteur , the purpose
of Article 36° of the Copyright and Neighbouring Ri ghts Law is to allow that very creator to reap
from the economic exploitation of his work, namely whenever there is a huge disproportion betweenthe price he charged for the assignment of his rights and the subsequent economic result of the
exploitation of the work.
We underline that, as far as we know, similar stipulations exist in the legislation of some EU
member States, e.g. Portugal ( Código do Direito Autor e dos Direitos de Autor , Article 49°), France
(Code de la Propriété Intellectuelle , Article L 131-5) and Germany (section 36).
Article 38° is justified by reasons of public interest:  it aims to make available again to the
public works no longer available whenever the subsequent right owner refuses to reproduce themIP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 6
without a good reason and notwithstanding his right to remuneration.  It is, in the end, something
similar to the expropriation of tangible property on the grounds of public interest, i.e. an acceptable
restriction of private rights for the sake of collective interest.
Similarly, the Portuguese Código do Direito Autor e dos Direitos de Autor , Article 52°.
B. Is there any guidance in the law of Macau,  China for how the terms such as those
referred to above should be interpreted and appl ied by assignees or other holders of copyright?
There are no other guidelines except what is written in the said articles.
2. What is meant by "material reciprocity" in Article 50 of the Copyright Decree?
"Material reciprocity" in Article 50° 2, of the Copyright and Neighbouring Rights Law means
that every right shall be granted to a non-resident author by the Macau law provided that the same
right would be granted to a Macau author in the country of the former.  For example, for anon-resident author to enjoy in Macau the right in Article 36° it is necessary that the same right is
granted in his country to the Macau residents.  This interpretation of the concept is based on the
doctrine, since there is no case law.  Nevertheless, as a consequence of the prevalence of international
conventional law over municipal law (Article 54°), the reciprocity requirement is not applicable to
WTO Member nationals.
3. What are the limitations on the private use exception (Copyright Decree, Article 6)
which stop the exception conflicting with normal  exploitation of the work and keep it from
unreasonably prejudicing the legitima te interests of the right holder?
Article 62° 1, of the Copyright and Neighbourin g Rights Law follows closely the well-known
principle in Article 9(2) of the Berne Convention.  It is a generic principle open to the interpretation
by the courts. The law does not list circumstances considered to be conflicting with the normal
exploitation of the work or that may cause damage to the author's legitimate interests.  Conversely the
law, in Article 60° 2, a), lists two situations that are considered as private use, and therefore neither
conflicting with the normal exploitation of the wo rk nor causing damage to the author's legitimate
interests:
(a) the reproduction of the work done exclusively for the private purposes of the person
who does it;
(b) the performance of a dramatic or dramatico-musical work, the showing of a
cinematographic work, the recitation of a literary work, the performance of a musicalwork and any other form of communication of a work already disclosed or published,
when done without gainful intent and in a place not open to the public.
Follow-up question:
Especially in respect of private use and scientific and humanitarian purposes, is there
any basis in the law of Macau, China for predic ting how the courts would give effect to the
terms of Article 13 of the TRIPS Agreement requiring limitations and exceptions to be confined
to "certain special cases which do not conflict with a normal exploitation of the work and do not
unreasonably prejudice the legitimate interests of the right holder."
There is not.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 7
4. What is the meaning of "whether or not he resides on the Territory" as applied in
Article 175 of the Copyright Decree to presumed consent?
The meaning is that the applicable term for the reply to the user is eight days whenever the
right owner lives in Macau and 20 days whenever he lives abroad.
Follow-up question:
What is the legal basis in the TRIPS Agreement for the "presumed consent" limitation
on exclusive rights of the copyright holder?
We consider that such "presumed consent" does not go against any of the obligations or
prohibitions in the TRIPS Agreement.  Therefore,  its legal basis is the freedom that the TRIPS
Agreement leaves to the national legislator.
5. Article 179 of the Copyright Decree appears to provide for a presumption that an
authorized broadcast of a performance may be recorded and reproduced without the
performer's consent.  Please explain if this interpretation is correct and, if so, how Article 14.1
of the TRIPS Agreement applies in this context.
Article 179° of the Copyright and Neighbourin g Rights Law provides that whenever an
authorization for the broadcast of a performance is granted, it is presumed to be granted as wellauthorization for the recording of that broadcast and for the reproduction of the recording. Logically
the presumption does only exist whenever the author izer does not decide otherwise. Consequently:
(a) the recording and reproduction of the broadcast performance is only lawful whenever
there was an authorization for the broadcast itself;
(b) the authorizer of the broadcast may in th at very authorization prohibit the recording
and reproduction.
Furthermore, if what is at stake is a criminal activity (e.g. the crime in Article 211° the
Copyright and Neighbouring Rights Law) the righ t owner has still other means to prevent the
undesired result.  Thus the said presumption is compatible with Article 14.1 of the TRIPS Agreement
which, following the Rome Convention, only provides for "the possibility of preventing..." .
6. In what circumstances are seizure and forfeiture of pirate products available under the
laws of Macau, China and which legal provisi ons specify rules on seizure and forfeiture?
Since they are the result of a criminal activity (Article 211° of the Copyright and
Neighbouring Rights Law) counterfeited goods are seized and their destruction may be ordered by the
court (Articles 163° of the Criminal Procedure Code and 101  of the Criminal Code).
Follow-up question:
Are remedies available, under criminal procedures or otherwise, which provide for
seizure, forfeiture and destruction of materi als and implements used in the commission of
offences or for heavy sentences for recidivists with a view to deterring further infringements?
Seizure of materials and implements used in the commission of any criminal offences (e.g.
the non-authorized reproduction or trade, on a commercial scale, of intellectual property
subject-matter) is mandatory (Article 163°, 1, of the Criminal Procedure Code).IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 8
In general, forfeiture of such materials and implements is mandatory whenever the court
considers that they are a threat to the safety of any persons, or to the good morals, or the public order,
or whenever there is a risk that they are used in the commission of another offence:  Article 101°, 1,
of the Criminal Code.  Regarding industrial property rights (i.e. "registerable rights") forfeiture isalways mandatory irrespective of such requirements (Industrial Property Law, Article 296°, 1).
In general, the destruction of materials and implements of a crime may be ordered by the
court whenever the law does not stipulate a different destiny to the said materials and implements (as
is the case in intellectual property-related crimes):  Article 101°, 3, of the Criminal Code.  However,
the destruction is mandatory regarding industrial property rights whenever it is not possible to
eliminate the part of the object that constitutes the infringement or, that elimination being possible,
whenever the right owner does not authorize any other destiny (Industrial Property Law,Article 296°, 2).
Criminal penalties are established in the law as a framework constituted by a maximum and a
minimum (e.g. imprisonment between two and five year s), the latter being raised by one third in case
of recidivism (Criminal Code, Article 70°).  The same criterion applies to recidivism in the
administrative offences in the field of industrial property rights (Industrial Property Law,Article 308°).
Additional question on copyright:
Please explain how Article 22°, 3, of th e Copyright and Neighbouring Rights Law
complies with Articles 7(1) and 7 bis of the Berne Convention through Article 9 of the TRIPS
Agreement.
Article 22°, 3, of the Copyright and Neighbourin g Rights Law states that the copyright in
collective works and works created for others expires 50 years after the publication.  Compatibility
with Article 7 bis of the Berne Convention (i.e. term of protection of joint authorship works) is not at
stake here.  Actually, Article 22°, 3, of the Copyright and Neighbouring Rights Law does not deal
with the subject which is instead regulated in Article 22°, 1.
Collective works are defined in Article 16°, 2, of the Copyright and Neighbouring Rights
Law.  Regarding the compatibility of their term of protection in Article 22°, 3, with Article 7(1) of the
Berne Convention, it should be taken into account that the object of the collective work is not the
intellectual creation senso strictu .  Regarding the latter, the protection term of 50 years post mortem
auctoris  applies (Article 21°, 1, ex vi Article 22°, 4, of the Copyright and Neighbouring Rights Law).
With respect to the protection term for works created for others, we believe that there may
have been an inconsistency of the legislator in Article 22°, 3, of the Copyright and NeighbouringRights Law, as we explain below:
(a) Article 22°, 3, does not say clearly whether it means first ownership (of the person on
behalf of whom the work was made) or not;
(b) in spite of that, we should construe it as meaning first ownership, otherwise we would
have to accept that the assignment of the work might modify the term of protection;
(c) nevertheless, the law does not consecrate any situation where the person for whom 
the work was created were the first owner of copyright, which means that the term of 
protection in Article 22°, 3, would have no application regarding works created for others.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 9
B. TRADEMARKS
7. Please give the definition of a sign under your national legislation and explain under
which conditions it is protectable.
Article 197 of the Industrial Property Law states that:
"The present Statute can afford protection as a trademark only to a sign or group of
signs which are capable of being, represented graphically, namely words, including
personal names, designs, letters, numerals, sounds, the shape of the product or its
packaging, and which are capable of distinguishing the products or services of one
company from those of other companies."
To find the actual borders of the concept one should also take into account Articles 198 (linguistic
requirements) and 199° (exceptions to protection).
8. Please confirm whether or not services are a protectable subject-matter in your
trademark law.  Please confirm if signs such as trade names are protectable.  Please describe if
elements such as sound, perfumes and containers are protectable.
Trademarks for services are explicitly protectable (Articles 197 and 201°, e)) of the Industrial
Property Law).  Trade names, sounds and containers  are included in Article 197 but perfumes do not
fulfil its requirements.
9. Please explain what the requirements of use a re, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a
registration in that respect.
Use is not a requirement for registration.  However the registration if the trademark not
seriously used for three consecutive expires years (Article 231° 1, b), of the Industrial Property Law)
and there is not a justifiable cause.  "Serious use" is defined in Article 231°:
1. Serious use of trademarks is considered:
(a) The use, under the terms of the present Statute, by the holder of the
registration or his properly, registered licensee of the trademark such as it was
registered or not differing, therefrom other than in details that do not alter its
distinctive character;
(b) The use of the trademark, as defined in the previous sub-paragraph,
for products or services for export only;
(c) The use of the trademark by a third party, provided that this is under
the supervision of the title-holder and for the purpose of maintaining the
registration.
2.  The serious use of an association mark shall be gauged according those that
make use thereof with the title-holder's consent .
3. The serious use of a certification mark shall be gauged according to the
persons qualified to use it.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 10
4.  The beginning, or resumption of seri ous use within the 3 months immediately
prior to the submission of a forfeiture request, starting from the end of an
uninterrupted period of 3 years of non-use, shall not be considered if the measures for
the beginning or resumption of the use are taken only after the holder learns that aforfeiture request is to be filed.
5. It shall be incumbent on the holder of the registration or his licensee, if such
exist, to prove the use of the trademark, failing which the trademark shall be deemed
not used.
10. Please confirm whether or not your legislation permits that the registration of
trademarks be indefinitely renewable.
Trademark registrations may be indefinitely renewed (Article 218°, 1), of the Industrial
Property Law).
11. Please describe the special requirements, if any, prescribed by your legislation
concerning the use of a trademark.
Besides what is said above in the reply to question 9, the following provisions may be
relevant:
Article 198.
(Linguistic requirements)
1. Wording contained in trademarks shall be written in Portuguese, Chinese or
English, and may combine elements of these different languages.
2. The trademarks of products destined solely for export can be written in any
language, but their use in Macao shall determine when they lapse.
3. The compulsory nature of the use of Portuguese, Chinese or English shall not
apply to applications for the registration of international marks, under the terms of the
respective regulation, and to marks whose applicant is not domiciled, headquartered or
established in the Territory.
Article 221.
(Preclusion of action by virtue of tolerance)
1. A holder of a registered trademark who, being aware of the fact, has tolerated
the use of a subsequently registered trademark for a period of 3 consecutive yearsfollowing its registration shall lose the right based on his previously registered
trademark, to request the annulment of the registration of the subsequent trademark or
to oppose its use in relation to the products or services for which the subsequent
trademark has been used, except if the registration of the subsequent trademark was
made in bad faith.
2. The 3-year period foreseen in the previous paragraph shall be counted and
lapse from the moment in which the holder becomes aware of the fact.
3. The holder of the subsequently registered trademark shall have no right to
oppose the previous right, even if that right can no longer be invoked against the
subsequent trademark.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 11
Article 223.
(Optional use of the trademark)
Notwithstanding the provision governing forfeiture of the right to the trademark, the
use thereof shall be optional, except where the products or services on which the
registered trademark is used are declared obligatory by some legal provision.
Article 231.
(Forfeiture of trademark registration)
1.  .......................................2. The registration of the trademark shall expire also if after the date on which it
was effected:
(a) ……………….
(b) ……………….
(c) The trademark was used in Macao in cases in which it was registered
for export only.
3. The registration of a collective mark shall be declared forfeit:
(a) ……………….
(b) If the body corporate in favour of which the trademark was registered
consents to its being used in a way contrary to its general purpose orto the provisions of its articles of association.
4. ……………..
5. ……………..
C. G
EOGRAPHICAL INDICATIONS
12. Please explain whether or not your trademark registration authority refuses a
trademark application if it contains a geographical indication.
Signs consisting exclusively on indications that may be used commercially to designate the
geographical origin of a product are not protectable as trademarks.  Furthermore, the registration shall
be refused whenever the trademark or any of its elements contains signs that are likely to mislead the
public, namely with respect to the nature, qualities, usefulness or geographical origin of the product orservice for which the trademark is to be used (Articles 199°, 1, a), and 214°, 2, a) of the Industrial
Property Law).
13. Please give the definition of a geographical indication in your legislation.
A protectable geographical indication may be the name of a region, specific locality or, in
exceptional cases, country or territory that is used  to designate or to identify a product originating
from  that region, specific locality or country or territory, whose reputation, specific quality or other
characteristic can be attributed to that geographical origin and whose production and/or
transformation and/or creation is conducted in the demarcated geographical area (Article 254°, 2 of
the Industrial Property Law).IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 12
14. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
Besides Article 254°, 2, of the Industrial Property Law (above), we underline that:
a) whenever the indication is liable to mislead the public, namely as to the nature,
quality and geographical origin of the respective product, the registration should be
refused and, if accepted, may be voided (Articles 256°, c), and 261°, b);
b) the constituent words of a legally defined, protected and monitored geographical
indication may not appear, in any form, in designations, tags, labels, advertisements
or any other documents concerning products that do not originate from the respectivedemarcated regions (Article 259°, 2);
c) the prohibition referred to in the previous  paragraph shall be applicable even if the
true origin of the products is mentioned or if the words constituting the designations
or indications are accompanied by qualifiers such as "kind", "type", "quality" or thelike and it shall be extended to the use of any expression, display or graphic
combination liable to confuse the public (Article 259°, 3).
15. Please describe whether or not, how additional protection is granted by your legislation
to wines and spirits.  Please mention other types of products, if any, covered by this additionalprotection.
Wine products, medicinal mineral waters and other products whose geographical
denomination of origin is subject to special protection and monitoring legislation in the respective
country or territory form an exception to the provisi on that the registration shall lapse, at the request
of any interested part when, by virtue of bona fide traditional and established commercial practices,
the geographical indication becomes a simple generic designation for a manufacturing system or a
certain type of product (Article 262° of  the Industrial Property Law).
16. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in
your jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of
names considered as generic in your jurisdiction.
The only rule that is close to an exception (allowed by Article 24.6 of the TRIPS Agreement)
is in Article 262°, 1, b), of the Industrial Property Law:  the registration of a geographical indication
shall lapse, at the request of any interested part when, by virtue of bona fide, traditional and
established commercial practices, the designation of origin or the geographical indication becomes a
simple generic designation for a manufacturing system or a certain type of product.  We do not have
case law or lists of indications that are considered as "generic" in Macau.
D. I
NDUSTRIAL DESIGNS
17. Please explain whether or not your legislatio n extends the protection to designs dictated
essentially by technical or functional considerations.  Please explain how textile designs are
protected.
The law does not exclude the registrability of designs dictated essentially by technical or
functional declarations.  However, according to Article 156°, 2, of the Industrial Property Law, the
registration does not protect:IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 13
(a) The visible characteristics of a product resulting exclusively from its technical
function; and
(b) The visible characteristics of a product that must necessarily be reproduced in its
exact form and dimensions so that the product into which the industrial model or design is to
be incorporated, or in which it is applied, be it mechanically connected to the other product, or
be it inserted within, around or against that  other product, can both perform their function.
The number 2 adds that notwithstanding the provision of subparagraph (b) above and
provided that the requirements of innovation and uniqueness have been met, the registration of an
industrial model or design is possible if its purpose is to permit a multiple assembly ofinterchangeable products or their interconnection to form a modular system.
Articles 186° to 196° of the Industrial Property Law contain special rules on textiles:
Article 186.
(Subject matter of the application for prior protection)
An application for prior protection may be filed in respect of industrial models or
designs of textile or clothing, as well as those of any other industries specified by an
administrative ruling.
Article 187.
(Deposit of samples or reproductions)
1. The application for Prior Protection referr ed to in the previous article shall be
preceded by the lodging of the respective samples or reproductions.
2. The DES may conclude protocols with suitable entities for the purposes
envisaged in the previous paragraph.
3. The prior protection application shall be filed with the DES within 15 days of
such lodging, it being possible to extended this deadline, for an equal period, for ajustified reason worthy of consideration.
Article 188.
(Secrecy and archiving)
1. The samples or reproductions referred to in the previous article shall be kept
secret during the period of validity of prior protection and archived beyond that period
of validity.
2. In case of conflict as regards priorities in requests of previous protection,
account shall be taken of the date on which the sample was deposited.
Article 189.
(Form of application for prior protection)
1. The application for prior protection for an industrial model or design shall be
filed in writing in an official language of the Territory, indicating the name or
commercial style of the applicant, his/its nationality and domicile or location, and
shall be accompanied by the following elements:IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 14
(a) The number of samples or- reproductions to be registered, up to a
maximum of 50;
(b) The title or short title that synthesises the subject matter or matters for
which protection is being claimed or the purpose of such subject matter;
(c) The name and country or territory of residence of the creator's.
2. Fantasy expressions used to designate the industrial model or design shall not
be subject matter subject to protection.
Article 190.
(Proof of deposit of samples)
The application for prior protection shall be accompanied by a certificate issued by the
entities referred to in article 187(2), whic h identifies the applicant, indicates the date
of reception of the samples or reproductions and the number allocated to the deposit.
Article 191.
(Duration of prior protection)
Prior protection shall obtain for 3 months from the date the respective application
reaches the DES.
Article 192.
(Rights conferred)
Prior protection shall confer a priority right for the purposes of any registration
application pursuant to the terms of articles 160 et seq.
Article 193.
(Lapse of prior protection)
Prior protection shall lapse in the period foreseen in article 191 or when application is
filed to register any of the models or designs covered by, that prior protection, under
the terms of articles 160 et seq.
Article 194.
(Conversion of the prior protection application)
During the prior protection period, the applicant may at any time begin the registration
process provided for in article[s] 160 [ et seq ] for the same designs or models for
which the prior protection application was made.
Article 195.
(Registration application for administrative acts or court action)
If the applicant for prior protection intends to intervene in the administrative
proceedings against the  granting of registration or if he intends to take legal action on
the industrial model or design, he shall file with the DES for a registration and
examination application pursuant to articles 167 and 168.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 15
Article 196.
(Fees)
1. A fee, set for the purpose, shall be due in respect of each application for prior
protection and according to the number of samples or reproductions that it contains.
2. Failure to pay the fees referred to in the previous sub-paragraph shall render
the prior protection application irreceivable.
Designs may also be protected under copyright law provided they fulfil the respective
requirements (Article 179° of the Industrial Property Law).
18. Please explain how your legislation protects right holders of a design against importing
of articles bearing embodied or copied design.
The exclusive right of importation is granted to the right holder by Article 177°, 2, of the
Industrial Property Law.  Consequently the right holder has automatically the right to use all the
means provided for in the civil procedure law to prev ent the infringement of his right or to repair an
already accomplished infringement.  In addition, the importation for commercial purposes is a crime
punishable with imprisonment up to two years or fine between 60 and 120 days (Article 290°).
Although a complaint is not required for the prosecu tion of this crime, the right holder may certainly
denounce it in order to make the authorities aware of the crime.  They then must act ex officio  in
accordance with the criminal procedure law.
19. Please mention whether or not your legislation provides for the right to issue a
compulsory licence for industrial designs.
There are no compulsory licences.
20. Please indicate for which period of time your legislation grants protection for industrial
designs.
The duration of the registration shall be five years from the date of the application, renewable
for like periods up to the 25 year limit (Article 176°, 1, of the Industrial Property Law).
21. Please describe how your legislation defines the notions of: novelty, inventiveness and
industrial application.
The first requirements are dealt with in Articles 152°-154° of the Industrial Property Law:
Article 152.
(Requirements for registration)
1. Industrial models and designs may be registered which:
(a) Are novel;(b) Are unique.
2. The innovative nature of the industrial model or design shall not be
diminished if, although not entirely novel, it involves novel combinations of known
elements or a different layout of already used elements, that endow the respective
subject matter with a unique character.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 16
Article 153.
(Novelty)
1. The industrial model or design shall be considered novel if prior to the
respective registration or priority application, no identical industrial model or design
was published within or outside the Territory.
2. Industrial models or designs that differ only in insignificant details shall be
considered identical.
Article 154.
(Unique character)
1. An industrial model or design shall be considered to be unique in character if
the global impression that it creates to the informed user differs from the globalimpression caused that user by any industrial model or design published prior to the
date of the registration application or claimed priority.
2. In appreciating the uniqueness of the character, account shall be taken of the
degree of freedom that the creator had to create the industrial model or design.
The law does not define industrial application regarding designs.  Only for inventions does the
law provide a definition of industrial application (Article 67°):  an invention is considered industrially
applicable if its subject-matter can be manufactured or used in any type of industrial or commercial
activity.
E. P
ATENTS
22. Please explain whether or not in your legislatio n, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions a re provided for, please describe in detail how
these exclusions are applied in legal as well as practical terms.
We assume that the question refers to what can be the subject-matter of a patent. Some
exceptions to patentability result from Articles 61°- 64° of the Industrial Property Law:
Article 61.
(Patentability requirements)
Any inventions, in any area of technology, pertaining to products or processes for
obtaining products, substances or compositions, even if they, involve a productcomposed of biological matter or that contains biological matter or a process that
permits the production, processing or use of biological matter, shall be patentable
provided that such inventions:
(a) Be novel;(b) Involve an inventive step; and(c) Be industrially applicable.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 17
Article 62.
(Exceptions and limitations to patentability)
1. The following shall not be patentable:
(a) Discoveries, as well as scientific theories and mathematical methods;(b) Materials or substances already existing naturally and nuclear matter;(c) Aesthetic creations;
(d) Schemes, rules and methods for performing mental acts, playing
games or doing business as well as computer programs, as such;
(e) Presentation o information.
2. Likewise, the following cannot be patented:
(a) Inventions whose commercial exploitation would be illegal, contrary
to public order public health or morality;
(b) Methods for the surgical or therapeutic treatment of the human or
animal body and methods of diagnosis applied to the human or animal body,
excluding products, substances or compositions used in any of those methods;
(c) Plant varieties or breeds of animal, as well as essentially biological
processes for the production of plants or animals.
3. Pursuant to sub-paragraph 2(a) above, the following are specifically not
patentable:
(a) The human body, in the various stages of its formation and
development, as well as the simple discovery of one of its elements, includingthe sequence or partial sequence of a gene;
(b) Human cloning processes;(c) Human germinal genetic identity modification processes;(d) The use of human embryos for industrial or commercial purposes;(e) Processes for the modification of the genetic identity of animals that
can cause them suffering without any substantial medical benefit to mankindor animalkind, as well as the animals obtained by those processes.
4. The provision in paragraph 1 excludes patentability only when the object for
which the patent is requested is limited to the elements mentioned therein as such.
5. For the purposes of sub-paragraph 2(a), patentability of the invention cannot
be excluded by the simple fact that the commercial exploitation thereof is prohibited
by Law or regulation.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 18
Article 63.
(Special cases of patentability)
1. The provisions of the previous article shall not exclude the patentability of..
(a) A substance or composition included in the prior art which is used in
the working of one of the methods mentioned in paragraph 2(b) of the same
article, provided that its use for any of the methods mentioned therein is not
included in the prior art;
(b) Any isolated element of the human body or produced in some other
way by a technical process, including the sequence or partial sequence of a
gene, even if the structure of that element is identical to that of a natural
element;
(c) An invention whose object is plant or animal matter if its technical
feasibility is not limited to a certain plant variety, or animal species;
(d) A biological substance isolated from its natural environment or
produced on the basis of a technical process, even if it pre-exists in the natural
state;
(e) An invention, the object of which is a microbiological or other
technical process or products obtained by such processes.
2. For the purposes sub-paragraph 1(b) above, the industrial application of a
sequence or of a partial sequence of a gene must be concretely stipulated in the patent
application.
Article 64.
(Biological processes and biological matter - definitions)
For the purposes of articles 62 and 63:(a) An essentially biological process for obtaining plant or animal matter shall be
understood as any process that consists entirely of natural phenomena such as crossing
or selection;
(b) A microbiological process shall be understood as any process that uses
microbiological matter, that involves the manipulation of microbiological matter or
that produces microbiological matter;
(c) Biological matter shall be understood as any matter that contains genetic
information and can reproduce itself or be reproduced in a biological system.
It may also be relevant to add that Article 105° of the Industrial Property Law establishes
some restrictions to the patent rights:
Article 105.
(Limitation on the rights conferred by the patent)
The rights conferred by the patent shall not include:IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 19
(a) The preparation of medicines made up on the spot and for individual cases by
dispensing chemists on a medical prescription, nor acts relative to medicines so
prepared;
(b) Acts performed exclusively for test or experimental purposes, including
experiments in preparation for the administrative processes necessary for the approval
of products by the relevant official bodies, because the industrial or commercial
exploitation of those products cannot begin before checking whether the patent
protecting them has lapsed,.
(c) The use on board ships of other countries or territories members of the WTO
or the Union of the subject matter of the patented invention in the body, of the ship, in
the machinery, in the masting, equipment and other accessories, when they
temporarily or accidentally enter the waters of the Territory, inasmuch as the said
invention is used exclusively for the needs of the ship;
(d) The use of the subject matter of th e patented invention either in the
construction or operation of air or land transport vehicles of other countries or
territories members of the WTO or the Union or of accessories on those vehicles,
when they temporarily or accidentally enter in the Territory;
(e) The acts envisaged in article 27 of the Convention of 7 December 1944
relative to International Civil Aviation, if these acts concern aircrafts of another State
but to which the provisions of the said article apply;
(f) The acts performed in the context of private use, having no commercial
purpose.
23. Please explain whether your legislation prov ides for the exclusion of inventions from
patentability based on ordre public  or morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
Please see above Article 62°, 2, a), Industrial Property Law.  Article 62°, 3, does stipulate a
few exceptions to patentability that are grounded in moral reasons.  They are:
(a) The human body, in the various stages of its formation and development, as well as
the simple discovery of one of its elements, including the sequence or partial sequence of a
gene;
(b) Human cloning processes;
(c) Human germinal genetic identity modification processes;(d) The use of human embryos for industrial or commercial purposes;(e) Processes for the modification of the genetic identity of animals that can cause them
suffering without any substantial medical benefit to mankind or animalkind, as well as the
animals obtained by those processes.
The registration of such a patent must not be accepted and if it is accepted it shall be void and
null (Articles 47° and 118° of the Industrial Property Law).  This situation has never happened in
practice.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 20
24. Please explain whether or not diagnostic, th erapeutic and surgical methods are excluded
from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
Please see above Article 62°, 2, b) of the Industrial Property Law.
25. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
Please see above Article 62°, 2, c) of the Industrial Property Law.
26. Please describe how micro-organisms, non-essentially biological processes,
microbiological processes and plant varieties are protected in your legislation.  Please explain in
this respect the relevant sections of your legislation.
Please see above Articles 63° and 64° of the Industrial Property Law.  Articles 78°, 94°, 95°
and 101° may also be relevant:
Article 78.
(Description of biotechnical inventions)
Should an invention claim to refer to biological matter that is not accessible to the
public and that cannot be described on the patent form in such a manner as to permitits realization by, a person skilled in the art, or to involve the use of matter of that
type, the description alone shall be considered enough for the purpose of obtaining the
patent, if:
(a) The biological matter has, by, the date of submission of the patent request,
been deposited in a recognized depositary institution, on the conditions to be defined
in a ruling by the Governor, and published in the Official Bulletin,
(b) The patent request includes the relevant information of which the applicant
disposes concerning the characteristics of the deposited biological matter;
(c) The patent request mentions the depositary institution and the deposit number.
Article 94.
(Access to deposited biological material and substitution thereof)
1. Access to deposited biological material shall be ensured by provision of a
sample:
(a) Until the first publication of the patent application, only to people who
have access to the proceedings;
(b) Between the first publication of the application and the granting, of
the patent, to anybody who so requests or, at the request of the depositor, only
to an independent expert;
(c) After the granting of the patent, and even if the patent lapses because
it becomes invalid or is forfeited, to anybody who so requests.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 21
2. The sample shall be delivered only if the person requesting it undertakes, for
the duration of the patent:
(a) Not to provide third parties with any sample of the deposited
biological material or of any material derived therefrom;
(b) Not to use any sample of the deposited material or any matter derived
therefrom, except for experimental purposes, save in the case of all express
waiver by the applicant or the patent-holder of that commitment.
3. Should the patent application be refused or withdrawn, access to the deposited
material may, at the request of the depositor, be limited to an independent expert for
20 years from the date of filing the patent ap plication and, in this case, the provision
of the previous paragraph shall apply.
4. The applications of the depositor referred to in subparagraph 1(b) and in the
previous paragraph may be presented only until the date on which the technical
preparations for publication of the patent applications are considered completed.
Article 95.
(New deposit)
1. When the biological material deposited pursuant to the provisions in the
preceding article ceases to be available at the recognized depositary institution, a new
deposit of the material shall be permitted on the conditions envisaged in the Budapest
Treaty of 28 April 1977 on the International Recognition of the Deposit ofMicro-organisms for Purposes of Patent Procedure.
2. Any new deposit shall be accompanied by a declaration, signed by the
depositor, certifying that the biological material forming the new deposit is identical to
that initially deposited.
Article 101.
(Scope of protection)
1. The scope of protection conferred by the patent shall be determined by the
content of the claims, the description and the drawings serving for interpretation
purposes.
2. If the subject matter of the patent concerns a process, the rights conferred by
that patent shall include the products directly obtained by the patented process.
3. The protection conferred by a patent relating to a biological material endowed
by the invention with certain properties shall extend to any biological material
obtained from the said biological material by reproduction or multiplication, in
identical or different form, and endowed with those same properties.
4. The protection conferred by a patent relating, to a process for producing a
biological material endowed by the invention with certain properties, shall extend to
biological material directly obtained by that process and any other biological material
obtained from the directly obtained biological material, by reproduction or
multiplication, in identical or differentiated form, and endowed with those same
properties.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 22
5. The protection conferred by a patent relating to a product that contains genetic
information or that consists in genetic information, shall extend to any material,
subject to the provisions of article 62(3(a)), in which the product is incorporate and inwhich its function is contained and exercised.
6. Notwithstanding the provisions of paragraphs 3 to 5, the sale or any other
form of commercialisation by the patent-holder, or with his consent, to a farmer, of
plant reproduction material, or breeding animals or other animal reproduction
material, shall imply that the farmer has permission to use the protected animals, the
animal reproduction material or the product of his harvest in order himself to proceedto reproduce or multiply animal or plant species exclusively for the purpose of his
own agricultural exploitation.
7. Unless otherwise agreed by the parties, the permission referred to in the
previous paragraph shall not entitle the farmer to exercise any reproductive activity forcommercial purposes or as part of a commercial activity.
27. Please explain how your legislation protects  patent right holders against importing and
against offering for sale of a patented invention.
The import and offer for sale are exclusive rights of the patent owner (Article 104° of the
Industrial Property Law) who may therefore use all the means provided by the civil procedure law toprevent the infringement of his right or the repair  of an accomplished infringement.  Such activities
are also a crime punishable with imprisonment up to two years or fine between 60 and 120 days
(Article 289° of the Industrial Property Law).  Although complain is not required for the prosecution
of this crime, the right holder may certainly denoun ce it in order to make the authorities aware of the
crime.  They the must act ex officio  in accordance with the criminal procedure law.
28. Please inform if your legislation provides for patent product protection of
pharmaceutical and agricultural chemical products.  In affirmative, please indicate the legal
reference.
The patentability of chemical pharmaceutical and agricultural chemical products, provided
that they fulfil the general requirements, results a contrario sensu  from the fact that they are not
excluded from patentability.  Moreover, Article 3° of the Industrial Property Law stipulates thatindustrial property includes all sectors of economic activity, including agricultural, forestry, livestock
and fishing activities, the extracting and processing, industries, trade and services, as well as all
manufactured or natural products.
29. Please clarify if the patent protection of a process, as provided for in your legislation,
covers the product obtained directly by that process.
According to Article 101°, 2, of the Industrial Property Law whenever the subject-matter of
the patent concerns a process, the rights conferred by that patent shall include the products directly
obtained by the patented process.
30. Please explain the additional conditions, if any, in your legislation other than the
sufficient disclosure of the invention in Articl e 29 of the TRIPS Agreement (e.g. submission of
justification for access to genetic material or prior informed consent to its use).  If such
additional conditions exist, please point out the relevant legislation and describe the additional
conditions in detail.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 23
There is an additional condition in Article 78° of the Industrial Property Law:
Article 78.
(Description of biotechnical inventions)
Should an invention claim to refer to biological matter that is not accessible to the
public and that cannot be described on the patent form in such a manner as to permit
its realization by, a person skilled in the art, or to involve the use of matter of that
type, the description alone shall be considered enough for the purpose of obtaining the
patent, if:
(a) The biological matter has, by the date of submission of the patent request,
been deposited in a recognized depositary institution, on the conditions to be defined
in a ruling by the Governor, and published in the Official Bulletin;
(b) The patent request includes the relevant information of which the applicant
disposes concerning the characteristics of the deposited biological matter;
(c) The patent request mentions the depositary institution and the deposit number.
Article 94.
(Access to deposited biological material and substitution thereof)
1. Access to deposited biological material shall be ensured by provision of a
sample:
(a) Until the first publication of the patent application, only to people who
have access to the proceedings;
(b) Between the first publication of the application and the granting of the
patent, to anybody who so requests or, at the request of the depositor, only to
an independent expert;
(c) After the granting of the patent, and even if the patent lapses because
it becomes invalid or is forfeited, to anybody who so requests.
2. The sample shall be delivered only if the person requesting it undertakes, for
the duration of the patent:
(a) Not to provide third parties with any sample of the deposited
biological material or of any material derived therefrom;
(b) Not to use any sample of the deposited material or any matter derived
therefrom, except for experimental purposes, save in the case of all express
waiver by the applicant or the patent-holder of that commitment.
3. Should the patent application be refused or withdrawn, access to the deposited
material may, at the request of the depositor, be limited to an independent expert for20 years from the date of filing the patent ap plication and, in this case, the provision
of the previous paragraph shall apply.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 24
4. The applications of the depositor referred to in sub-paragraph 1(b) and in the
previous paragraph may be presented only until the date on which the technical
preparations for publication of the patent applications are considered completed.
Article 95.
(New deposit)
1. When the biological material deposited pursuant to the provisions in the
preceding article ceases to be available at the recognized depositary institution, a new
deposit of the material shall be permitted on the conditions envisaged in the Budapest
Treaty of 28 April 1977 on the International Recognition of the Deposit ofMicro-organisms for the Purposes of Patent Procedure.
2. Any new deposit shall be accompanied by a declaration, signed by the
depositor, certifying that the biological material form ing the new deposit is identical
to that initially deposited.
31. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
Please see reply to question 22, in fine (i.e. Article 105° of the Industrial Property Law).  We
reproduce also Article 106°:
Article 106.
(Non-contravention of the patent)
1. The rights conferred by, the patent shall not be deemed to have been convened
by anyone who, in good faith, in the Territory and before the date of application or of
priority, when claimed:
(a) Came to know of the invention by his own means; and(b) Used it or made effective and serious preparations with a view to such
use.
2. Anyone benefiting from the assumption of non-contravention shall bear the
onus of proof of the situations foreseen in the previous paragraph.
3. Prior use or the preparations for such use, based on the disclosures referred to
in article 68(1(a)) shall not detract from good faith.
4. In the cases envisaged in paragraph 1, the beneficiary shall be entitled to
continue or to begin use of the invention, to the extent of his prior knowledge, for the
purposes of his own enterprise, but may transmit it only  together with the commercialestablishment in which the invention is used.
32. Please explain whether or not your legislation provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.  In
particular, please explain how your national le gislation considers individual merits in the
authorization of such use.
We reproduce below the articles concerning compulsory licences:IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 25
Article 110.
(Mandatory licences - general rules)
1. Mandatory licences can be granted only when the potential licensee has made
efforts to obtain a contractual licence from the patent-holder on acceptablecommercial terms and such efforts have not been successful within a reasonable
period.
2. While a mandatory licence is in force, the patent-holder cannot be compelled
to grant another licence before the mandatory licence has been cancelled.
3. The holder of the patent for which a mandatory licence is issued shall be
entitled to:
(a) An appropriate remuneration in each concrete case, bearing in mind
the economic value of the licence;
(b) Request the judicial revision of the decision to grant or refuse such
remuneration.
4. Mandatory licences may be assigned only  with the part of the company or of
the establishment that exploits them.
5. The title-holder of a patent in respect of which a mandatory licence has been
issued shall, when granting the licence, provide the licensee with all the elements of a
technical nature of which he is aware at that moment and that are necessary for the
exploitation of the invention.
Article 111.
(Mandatory licences issued in the case of no or inadequate exploitation of the patent)
1. If a patent is not or is inadequately exploited, there shall lie grounds to apply
for a mandatory licence if the patent-holder, without good or legal reason, by 4 years
from the date of the patent application or 3 years from the date of the granting,
whichever the longer:
(a) Has not begun exploitation or made effective preparations to that end,
nor granted licences for the patented inve ntion in the Territory or in any other
country or territory member of WTO;
(b) Has not exploited the invention in such a way that the results satisfy
the market requirements in the Territory.
2. Another ground for requesting a mandatory licence shall be the patent-holder's
failing, without good legal reason, to exploit the invention, either in Macao or in any
other country or territory member of WTO, during 3 consecutive years.
3. Good reasons shall be deemed to be objective difficulties of a technical or
legal nature, independent of the will and situation of the patent-holder, that make it
impossible to exploit or sufficiently exploit the invention, but not economic or
financial difficulties.
Article 112.
(Interdependent licences)
1. When the exploitation of an invention protected by a patent is not possible
without damaging the rights conferred by a prior patent, the mandatory licence may be
granted only if the subsequent invention represents a notable technical progress overthe prior invention.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 26
2. Once the mandatory licence has been granted, either of the licence-holders
shall be entitled to request a mandatory licence on the patent of the other.
Article 113.
(Public interest)
1. A mandatory licence for the exploitation of an invention can be granted in
the public interest.
2. Public interest is deemed to obtain when the beginning, the increase or the
generalisation of the exploitation of the invention or the improvement of the
conditions in which the invention is exploited are of primordial importance for
public health or safety.
Article 114.
(Application for mandatory licences)
1. Application for the granting of a mandatory licence shall be filed with the
DES, accompanied by the necessary elements proving the respective grounds.
2. Applications for mandatory licences shall be examined in the order in which
they are filed with the DES.
3. Once the DES has received the application for a mandatory licence, it shall
notify the patent-holder in order that, with in 2 months, he/it may state what he/it
wishes to do, submitting the respective proof.
4. The DES shall then have 2 months to analyze the arguments advanced by the
parties and the guarantees offered by the applicant for the mandatory licence that itwill exploit the invention, to prepare the corresponding opinion and to submit the
proceedings for the Governor's decision, which shall be handed down within 1 month.
5. When the mandatory licence application is based on the public interests
referred to in the previous article, the process shall be submitted to the Governor's
appreciation only after having obtained the opinion of the Science, Technology andInnovation Committee and, if applicable, of the Health Services of Macao or of the
Directorate of the Macao Security Services, and after the title-holder has had a chance
to take a stand on the tenor of those opinions.
6. The deadlines for the issue of the opinions and the patent-holder's answer,
under the terms of the previous paragraph, shall be set by the DES at 1 to 3 months.
7. If the application is deferred, the DES shall appoint an expert and notify both
parties in order that, within 1 month, they name their experts, it then being up to thethree experts, within 2 months, to agree on the conditions of the mandatory licence
and the remuneration to be paid to the patent-holder.
Article 115.
(Cancellation and re-appreciation of the mandatory licence)
1. The mandatory licence can be cancelled if:
(a) The licensee does not abide by the conditions imposed on granting or
the purposes for which it was granted;
(b) The circumstances on which the granting was based no longer obtain
and are unlikely to be repeated.
2. The initiative to introduce proceedings to cancel the licence shall lie with the
DES, with the patent-holder and, where applicable, with the other licensees.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 27
3. The patent-holder shall be entitled, with good reason, to request the re-
appreciation of the conditions and circumstances under which the mandatory licence
was granted.
Article 116.
(Notification and appeal with respect to the granting, refusal or cancellation of licence)
1. The DES shall notify the parties of the granting and respective exploitation
conditions, as well as of the refusal or cancellation of the licence.
2. Appeal to the competent civil court sha ll, within 3 months of the date of the
notification, lie against the decision by the Governor to grant, refuse or revoke the
mandatory licence, or just against the conditions on which it was granted.
3. The granting shall take effect only after the decision has become final and has
been registered by the DES and after proof of payment of the fees due have been
produced, as if it were an ordinary licence.
33. Please explain how your legislation explicitly ensures that a proposed user has made
efforts to obtain authorization from the righ t holder on reasonable commercial terms and
conditions and that such efforts have not been successful within a reasonable period of time.  Inthis context, how do you define "reasonable period of time"?  Please also explain how your
legislation ensures that the use of a compulsory  licence shall be author ized predominantly for
the supply of the domestic market of the Member authorizing such use.
Please see above Article 110°, 1, of the Industrial Property Law (in reply to question 32).  The
law does not define "reasonable period of time".
34. Please mention if your legislation grants additional protection for innovations after the
20 years of patent protection have lapsed.
There is no additional protection for innovations.
35. Please explain how your legislation provide s for the enhanced patent protection of
patents or patent applications pending on 1 January 1995.
We assume that the question regards the obligation in Article 70.7 of the TRIPS Agreement.
The protection of patents in Macau under the legislation formerly in effect was already very close to
the protection granted by the new Industrial Property Law.  Furthermore, there were no patent
applications pending in Macau on the date of application of the TRIPS Agreement to it.  Anyway the
patent applications may be modified according, to Article 89° of the Industrial Property Law:
Article 89.
(Amendments to claims, description or drawings)
1. The applicant shall be entitled to make amendments to the claims, description
and drawings:
(a) Once only up to the filing of the request for the conduct of the
examination report or up to the reception by the DES of the documents
referred to in article 86(1(b) and (c);
(b) Once only after the filing with the DES of the documents referred to
in article 86(1 (b) and (c) or following reception of the examination report;IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 28
(c) Once only where a divisible application is filed.
2. A patent application cannot be amended in such a way that its subject matter
exceeds the content of the application as originally submitted.
3. The right to amend provided for in the present article shall include the right to
adapt the title of the invention and the abstract, as well as to submit a short comment.
4. The amendment right accorded under sub-paragraph 1(b) shall be exercised
within 4 months following the occurrence of the facts referred to.
5. The amendment right accorded under sub-paragraph 1(c) may be exercised
within 4 months following the presentation of  a divisible application provided that it
does not exceed the deadline referred to in the previous paragraph.
6. Each amendment shall be subject to the payment of the fee set for the purpose.
36. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
The inversion of the burden of proof is ruled in Article 102° of the Industrial Property Law as
follows:
Article 102.
(Inversion of the onus of proof)
1. If the subject matter of a patent is a process for the manufacture of a new
product, the same product manufactured by a third party shall, unless proven to the
contrary, be deemed to be manufactured by the patented process.
2. When taking evidence, the court shall ta ke account of the legitimate interest of
the party bearing the burden of proof in preserving his trade secret.
F. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
37. Please describe how your legislation protects topographies.
Topographies are protected by a sui generis right (Articles 136°-149° of the Industrial
Property Law).
38. Please explain what protection your national legislation grants to right holders against
the unlawful importation, sale or distribution for commercial purposes of topographies
including integrated circuits or other articles in which a topography is incorporated in
accordance with Article 36 of the TRIPS Agreement.
We reproduce below Article 143° of the Indus trial Property Law, which states the rights
granted by the registration of a topography:
Article 143.
(Rights conferred by registration)
1. The registration of the topography shall confer on the holder the right to make
exclusive use of the topography throughout the Territory by producing,IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 29
manufacturing, selling or exploiting it or the items in which it is applied, together with
the obligation to do so effectively and in keeping with the needs of the market.
2. The registration of the topography shall furthermore confer on the holder the
right to authorize or to prohibit any of the following acts:
(a) The reproduction of the protected topography;
(b) The import, sale or distribution in any other form for commercial
purposes of a protected topography, of a semiconductor product into which is
incorporated a protected topography, or an article into which is incorporated a
semiconductor product of that type, to the extent and only to the extent that it
continues to include a topography reproduced illegally.
39. Please explain how your legislation provide s for the derogation from Article 36, as
specified in Article 37 of the TRIPS Agreement, where a person has no knowledge or reasonable
grounds to know when acquiring an integrated circuit or an article incorporating such an
integrated circuit that it contains an unlawful topography.
We reproduce below Article 144° of the Industrial Property Law:
Article 144.
(Limitation on the rights conferred by the registration)
1. The rights conferred by the registration of the topography shall not include:
(a) The private reproduction of a topography for non-commercial
purposes;
(b) Reproduction for the purpose of analysis, evaluation or teaching;
(c) The creation of a different topography, starting from the analysis or
evaluation referred to in the previous sub-paragraph, that could in turn benefit
from the protection foreseen in the present Statute;
(d) The performance of any of the acts referred to in article  143(2), in
relation to a semiconductor product in which is incorporate an illegally
reproduced topography or any article in which is incorporate a semiconductor
product of that type, if the person that performed or ordered the performance
of those acts neither knew nor should have known on acquiring the
semiconductor product or the article into which that semiconductor product
was incorporated, that the said article incorporated an illegally reproduced
topography.
2. Once the person referred to in sub-paragraph 1(d) has received enough
information to indicate that the topography was reproduced illegally, that person can
perform any of the acts in question in relation to the products in his possession or
ordered up to that moment, but must pay the holder of the registration an amount
equivalent to an appropriate royalty such as could be demanded under the protectionof a licence freely negotiated in relation to a topography of that type .
40. Please state the term of protection granted by your legislation to topographies.
We reproduce below Article 142° of the Industrial Property Law:IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 30
Article 142.
(Duration)
The registration shall last 10 years from the date of the respective application or from
the date on which the topography was exploited for the first time anywhere, whicheverthe sooner.
G. P
ROTECTION OF UNDISCLOSED INFORMATION
41. Please explain whether or not your legislatio n grants a defined period of time for the
protection of undisclosed information.  If so, please give the time span.
There is no definite period of time.
42. Please explain how your legislation defines undisclosed information.
Undisclosed information is protected as an entrepreneurial secret .  The latter is defined by
Article 166°, 2, of the Commercial Code (enacted by  Decree-Law 40/99/M, of 03 August 99) as being
any technical or commercial information provided  it fulfils all the following requirements:
a) It must have a practical application.,b) It must provide an economic advantage to the owner;c) It must not be known by the public;
d) The owner must have taken the safety measures required to keep it confidential.
43. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
There is not in the law a generic definition of data for the purposes of Article 39.3 of the
TRIPS Agreement.
The marketing of pharmaceutical products in Macau depends on the submission of
information that may be comprehended in the concept of data mentioned in Article 39.3 of the TRIPS
Agreement (e.g., succinct description of the manufacturing process, chemical composition and the
result of some scientific tests).  All this data is classified as confidential (Decree-Law 58/90/M, of
19 September).  Moreover, provided they fulfil the requirements in its Article 166°, 2, the data are
protected against unfair commercial use under the Commercial Code, (please see the reply toquestion 42).
Regarding agricultural chemical products, there is no agricultural activity in Macau and
consequently there is neither local market for agricultural products nor legislation about it.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 31
IV. RESPONSES TO QUESTIONS POSED BY JAPAN
A. COPYRIGHT AND RELATED RIGHTS
1. Please explain how the protection is provi ded for works, phonograms, performances and
broadcasts from other WTO Members under the Law on Copyright and Neighbouring Rights
of Macau, China (hereinafter referred to as  "Copyright and Neighbouring Rights Law").
Please describe the provisions of the Copyrigh t and Neighbouring Rights Law which provide for
the national treatment and most-favoured-nation treatment as required by Articles 3 and 4 of
the TRIPS Agreement as well as Article 9.1 of th e Agreement which incorporates Article 5(1) of
the Berne Convention.
We remind that, since Macau is not a state, there is not a Macanese nationality.  Therefore,
national treatment in Macau must be understood as the treatment given to residents, the general rule
being that non-residents enjoy the same civil rights as the residents in all civil matters (Article 13 of
the Civil Code, enacted by Decree-Law 39/99/M, of 3 August 1999).  In harmony with that general
rule, Article 50(2), of the Copyright and Neighbouring  Rights Law states that the non-resident authors
are generally treated as residents for protection purposes, provided there is reciprocity.  Howeverregarding works of nationals of WTO Members we must take into account Article 54 of the Copyright
and Neighbouring Rights Law.  This Article establishes that the rules on international protection in
Articles 49 to 53 do not hinder the application of any international conventional rule binding to
Macau and thus excludes reciprocity regarding WTO Members.  With regard to phonograms,
performances and broadcasts, identical meaning is conveyed by Article 174 of the Copyright andNeighbouring Rights Law.
This means that international conventions prevail over municipal law and are consistent with
Article 1(3), of the Macau Civil Code, which states the prevalence of international conventional law
as a general principle of our legal system.  Such principle is of fundamental importance to understand
the protection of WTO nationals in Macau.
Consequently, the treatment given to Macau residents regarding works, performances,
phonograms and broadcasts is extended to the nationals from the other WTO Members.  What is said
above about the prevalence of international law is also effective regarding the most favoured nation
rule.
2. Please explain exceptions or exemptions of the national treatment and most-favoured-
nation treatment under the Copyright and Neighbouring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.
There are no exceptions to national treatment.  Regarding most-favoured nation exemptions,
Articles 50(2), and 174(2) of the Copyright and Neighbouring Rights Law have reciprocity provisos,
which are only effective whenever not removed by an international convention (prevalence of theinternational conventional law).
3. Please explain whether and how Macau, China provides retroactive protection to works,
phonograms, performances from other WTO Members, as required by Articles 9.1, 14.6 and
70.2 of the TRIPS Agreement which apply, mutatis mutandis , Article 18 of the Berne
Convention.  Please indicate the date to which su ch protection extends back with respect to each
category of subject-matter.
The terms of protection are 50 years post mortem autoris  as a general rule (Article 21(1)),
50 years since the publication for collective works, works made for hire whenever the copyright isIP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 32
attributed to the employer or commissione r, anonymous works and audio-visual works
(Articles 22(3), 23(1) and 106), 25 years since the making for applied arts works and photographic
works (Articles 148 and 155), 50 years since the performance for performances (Article 182),
50 years since the recording for phonograms (Article 188) and 20 years since the broadcast forbroadcasts (Article 192).  The retroactive protection of existing subject-matter from other
WTO Members should be calculated in accordance with the said terms.
4. Please explain whether protection of "computer programs" under the Copyright and
Neighbouring Rights Law covers computer programs in both source and object code, as
required by Article 10.1 of the TRIPS Agreement.  Are those computer programs protected as
literary works in accordance with Ar ticle 2(1) of the Berne Convention?
Computer programs are expressly considered as literary works in Article 2(1)(a) of the
Copyright and Neighbouring Rights Law.  The law does not separate software in source code and in
object code.  Consequently, according to the interpretation principle ubi lex non distinguit nec nos
distinguere debemus (i.e., where the law does not distinguish, the interpreter should not distinguish as
well) we must conclude that both programs in source code and object code are comprehended.
5. Please clarify whether "database" under the Copyright and Neighbouring Rights Law
includes compilation of data in machine-readab le form.  Please explain how the Law complies
with Article 10.2 of the TRIPS Agreement in this respect.
The Copyright and Neighbouring Rights Law legislator did not consecrate a definition of
database, probably fearing to not achieve one able to stand the international evolution.  The concept is
thus open to the interpreter. According to Article 2(1)(o), the protection comprehends "the
computerised databases and the compilations of data, provided that they are original in the criterion of
organization of data or in the selection of its contents".  The compilations in machine-readable form
that are mentioned in the question are certainly included in the computerised databases expressly
stated in the law. In what regards non-computerised databases, they can as well be protected under the
second part of Article 2(1)(o) as "compilations of data".
Article 2(3) makes clear that the protection granted to databases and compilations does not
cover the data itself, although other rights, including copyright, may subsist on it.
6. Please indicate whether compact discs, su ch as CD-ROMs, mainly consisting of music
and accompanied with characters, still images, mo tion pictures or any other types of data than
audio, are protected as a "database" under the Copyright Law, if such data, including music,
can be retrieved.
As said above, the law does not give a definition of database but it does not exclude from the
concept the optical media mentioned in the question.  Once again we should apply here the principle
ubi lex non distinguit nec nos distinguere debemus.   It is our understanding that nothing in the law
prevents the comprehension of the said works within the concept of database.  Furthermore, whenever
interpreting this concept the courts will certainly have to take into account the international trend.
B. PATENTS
7. Please explain how Article 34.2 and 34.3 of the TRIPS Agreement, regarding the shift in
the burden of proof in civil proceedings for patent infringement, is implemented in legislation of
Macau, China.
Article 102(1) of the Industrial Property Law (Decree-Law 97/99/M, of 13 December 1999)
shifts the burden of proof solely in the circumstances established Article 34.1(a), of the TRIPSIP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 33
Agreement, i.e., whenever the product obtained by the patented process is new.  In the circumstances
of Article 34.1(b) of the TRIPS Agreement there is no shift in the burden of proof.
Number 2 of Article 102 of the Law adds that, in the production of evidence, the court must
take into consideration the legitimate interests of the party who has the said burden of proof to protecthis business secrets.
C. E
NFORCEMENT
8. Please indicate the remedies which the judi cial authorities order regarding intellectual
property rights, including injunctions, damages, expenses, destruction or disposal of infringing
goods, materials or implements for their producti on.  Please explain the criteria for and the way
of calculation to decide the amount of the damages which judicial authorities order to theperson who infringes intell ectual property rights to pay to the right holder.
Generally speaking judicial authorities in Macau may order civil remedies and apply criminal
penalties.  In addition, for some infringements there are also administrative penalties which are
applicable by administrative bodies.  Regarding the former (criminal and civil), the complete
protection available in Macau results not only from the intellectual property legislation but also fromthe civil law, the civil procedure law, the criminal law and the criminal procedure law.  These are
mainly contained in the Civil Code, the Civil Pr ocedure Code, the Criminal Code and the Criminal
Procedure Code respectively.  We may succinctly describe the civil and criminal remedies as follows:
(a) Criminal law:
1. Several behaviours that infringe intellectual property rights are considered to be a
crime (see Articles 209 to 214 of the Copyright and Neighbouring Rights Law and
Articles 289 to 294 of the Industrial Property Law);
2. The main penalties available are jail terms and criminal fines;
3. Nonetheless, there are also accessory penalties like the temporary interdiction of a
certain professional activity, the closure of the commercial establishment or the
publication of the judicial sentence (Articles 92 to 95 of the Criminal Code,
Articles 203 to 208 of the Copyright and Neighbouring Rights Law and Articles 10 to
17 of the Law 6/96/M, the latter being applicable as effect of Article 298 of the
Industrial Property Law);
4. Infringing goods, as well as materials and instruments used to produce them, are
seized and may be destroyed (Article 296 of the Industrial Property Law and
Articles 101 to 104 of the Criminal Code).
(b) Civil law:
1. To every right corresponds a civil action aimed to ascertain it, or to prevent its
offence, or to provide redress for an offence already accomplished (Article 1(2), of
the Civil Procedure Code);
2. There are also urgent procedures  (cautionary procedures) to prevent the
accomplishment of an offence and which may be ordered inaudita altera parte
(Articles 326 to 337 of the Civil Procedure Code);IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 34
3. The right owner may claim as damages the total amount of the damages really
suffered and proven in the court, including ceasing profits (Articles 477(1), 556 and
558 of the Civil Code).  Exceptionally, whenever the offence was due to simple
negligence, the court may establish an indemnity lower than the real amount of thedamages (Article 487 of the Civil Code).
9. Please indicate titles of laws and regulations and their provisions in which the
suspension of the release of counterfeit tradem ark of pirated copyright goods is prescribed, as
stipulated in Article 51 of the TRIPS Agreement.   Please explain types of intellectual property
rights about which the suspension can be ma de upon an application by a right holder.
The Macau borders are under the jurisdiction of the Maritime and Fiscal Police that is
competent to control the importation or exportation of goods (Article 2 of Decree-Law 2/95/M, of
27 January 1995). Among its duties, the police must ex officio  prevent  as far as possible the
consequences of any crime and do whatever necessary to preserve the evidence (Article 44(2), of the
Criminal Procedure Code generally and, for the indu strial property rights, Article 295 of the Industrial
Property Law).
The importation of goods that infringe copyrights, patents, topographies of integrated circuits
or industrial designs is itself a crime in Macau (Article 212 of the Copyright and Neighbouring Rights
Law). Consequently the police has the power to suspend the importation either ex officio  or following
a denunciation. Anyone, including the right owner, may denounce the crime to the authorities, either
verbally or in writing (Articles 227 and 229 of th e Criminal Procedure Code). Regarding trademarks
and geographic indications Article 286 of the Indus trial Property Law expressly states that the
Maritime and Fiscal Police must ex officio  seize infringing goods either on the importation or the
exportation. A denunciation for that purpose can certainly be presented by the right owner according
to the general rules (Articles 227 and 229 of the Criminal Procedure Code).
Irrespective of any crime, right owners may also use the cautionary procedure provided in
Articles 326 to 337 of the Civil Procedure Code to prevent the importation of goods that infringe any
intellectual property right. The said procedure is an urgent judicial means that purports to prevent any
infringement of a right and whose success depends on a main civil action to be filed within a short
term.
New legislation on customs is expected to be enacted in the near future and it may have
consequences in the application of Articles 51 to 60 of the TRIPS Agreement.
10. Please explain the kind and amounts of crim inal penalties including imprisonment and
fines regarding intellectual property rights.  In  particular, are the crimes persecuted only when
the injured party has made a formal accusation?  Please also explain whether penalties areconsistent with Article 61 of the TRIPS Agreement which requires the penalties to be sufficient
to provide a deterrent, consistently with the level of penalties applied for crimes of a
corresponding gravity.
The main criminal penalties are jail terms and criminal fines though accessory penalties may
also be imposed (see reply to question 8).  Usually the law gives the court the power to choosebetween a jail term and a fine. Criminal fines are established in "days", each day being worth between
50 and 10 000 patacas (MOP, the Macau currency).  It is also a power of the court to establish the
value of each "day".
The various crimes related with intellectual property are typified in Articles 209 to 214 of the
Copyright
 and Neighbouring Rights Law and Articles 289 to 294 of the Industrial Property Law.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 35
In the Copyright  and Neighbouring Rights Law the heaviest penalties are the jail term
between one and four years (no fine admitted) for the counterfeiting of protected works or
phonograms (Article 211) and the jail term up to four years, or fine up to 360 days, for the usurpation
of an unpublished work (Article 209(1) and (2).  The trade on counterfeited works and phonograms(Article 212), for example, as well as other crimes  are punished with imprisonment up to two years or
fine up to 240 days.
In the Industrial Property Law the heaviest penalty is the jail term up to three years, or fine
between 90 and 180 days, for counterfeiting or unlawful utilisation of a trademark (Article 291).
Legal persons involved in industrial property crimes may also be judicially dissolved (Article 9 of the
Law 6/96/M, of 15 July 1996, applicable as effect of Article 298 of the Industrial Property Law).
Prosecution does not depend on accusation or complaint except in the crimes in Articles 209
(usurpation of a protected work) and 210 (unauthorized publication of an unpublished work) of the
Copyright and Neighbouring Rights Law, where a simple complaint (not an accusation) is required.
V. RESPONSES TO QUESTIONS POSED BY THE UNITED STATES
A. GENERAL
1. With respect to each form of intellectual  property covered by Part II of the TRIPS
Agreement, including plant variety protection, please explain the manner in which the laws ofMacau ensure that nationals of other WT O Members receive national treatment and
most-favoured-nation treatment as required by Articles 3 and 4 of the TRIPS Agreement.
We remind that, Macau not being a state, there is not a Macanese nationality.  Therefore,
national treatment in Macau must be understood as the treatment given to residents, the general rule
being that non-residents enjoy the same civil rights that the residents do in all civil matters
(Article 13 ° of the Civil Code, enacted by Decree-Law 39/99/M, of 3 August 1999).
In harmony with that general rule, Article 50 °, 2, of the Copyright and Neighbouring Rights
Law states that the non-resident authors are generally treated as residents for protection purposes,provided there is reciprocity.  However regarding works of nationals of WTO Members we must take
into account Article 54 ° of the Copyright and Neighbouring Rights Law (enacted by Decree-Law
43/99/M, of 16 August).  This article establishes that the rules on international protection in
Articles 49 ° to 53 ° do not hinder the application of any international conventional rule binding to
Macau and thus excludes reciprocity regarding WTO Members.  In what concerns phonograms,
performances and broadcasts, identical meaning is conveyed by Article 174 ° of the Copyright and
Neighbouring Rights Law.  This means that internat ional conventions prevail over municipal law and
is consistent with Article 1 °, 3, of the Macau Civil Code, which states the prevalence of international
conventional law as a general principle of our legal system.  Such principle is of fundamental
importance to understand the protection of WTO nationals in Macau.
With respect to all the other intellectual property rights, the Industrial Property Law (Decree-
Law 97/99/M, of 13 December) expressly states that it is applicable to nationals of WTO Members
(Article 2 °, 1, c).
Consequently, the treatment given to Macau residents regarding intellectual property rights is
extended to the nationals from the other WTO Members.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 36
What is said above about the prevalence of international law is also effective regarding the
most-favoured-nation rule.
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain whether and how the copyright law of Macau complies with Article 9 of
the TRIPS Agreement requiring that Members co mply with all Articles 1 through 21 of the
Berne Convention (1971), except Article 6 bis, since Members do not have rights or obligations
relating to the latter Article under the TRIPS Agreement.
Time constraints, due to the fact that the United States' questions were presented well after the
17 April deadline and to our wish to present this reply before the meeting of the TRIPS Council in the
last week of June 2000, made it impossible for us to explain in full detail how every obligation in the
Berne Convention was embodied in the Copyright and Neighbouring Rights Law.  Nonetheless,copies of this statute were sent earlier to the US Government via the Consulate-General in
Hong Kong, as well as to the WTO Secretariat.
3. Please explain how the copyright law of Macau protects computer programs as literary
works and compilations of data as required by Article 10 of the TRIPS Agreement.
We reproduce below Article 2 °, 1, a) and o) of the Copyright and Neighbouring Rights Law:
Article 2.
Protected Works
1. The following in particular are protected works in so far as they are original:
a) literary, journalistic, scientific and other writings, including computer
programs;
………o) databases and other compilations that are original in the arrangement
of their subject matter or the selection of their contents.
4. Article 11 of the TRIPS Agreement  protects rental rights for computer programs and
cinematographic works.  Please describe and cite to the corresponding provision of the
copyright law of Macau.
We reproduce below Article 56 °, 3, f) and o) of the Copyright and Neighbouring Rights Law:
3. The author shall in particular have the exclusive right to carry out or authorize
the following:
……………
f) distribution to the public of the original or copies of the work by any
means, including, in the case of cinematographic works and computer
programs, commercial rental, but excluding lending;
5. Please explain how the term translated as "m aterial reciprocity" in Article 50(2) of the
copyright law of Macau is interpreted in det ermining whether a foreig n work is entitled to
protection.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 37
"Material reciprocity" in Article 50 °, 2, of the Copyright and Neighbouring Rights Law
means that every right shall be granted to a non-resident author by the Macau law provided that the
same right would be granted to a Macau author in the country of the former.  For example, for a non-
resident author to enjoy in Macau the right under Article 36 °, it is necessary that the same right is
granted in his country to the Macau residents.  This interpretation of the concept is based on the
doctrine, since there is no case law.  Nevertheless, as a consequence of the prevalence of international
conventional law over municipal law (Article 54 °), the reciprocity requirement is not applicable to
WTO Member nationals.
6. Please explain what kinds of activities are envisioned by the excep tion to copyright, in
Article 61(l), translated as "scientific or humanitarian purposes".
For example, scientific research.  We stress that the exception concerns only works that are
not available in the market.
7. Please state the terms of protection the co pyright law of Macau provides  for works of
authors other than a photographic work or a wo rk of applied art and cite to the relevant
provisions of law.
The general term of protection is 50 years post mortem auctoris  (Article 21 °, 1).  We
reproduce below the other relevant articles of the Copyright and Neighbouring Rights Law  (except
for photographic and applied arts works):
Article 22.
Works of Joint Authorship, Collective Works and Works Created for Others
(1) Copyright in works of joint authorship as a whole shall lapse 50 years after
the death of the last surviving co-author.
(2) For the purposes of the preceding paragraph, only those persons in whose
names the work has been disclosed or published as provided in paragraph (4) of
Article 14 shall be considered co-authors.
(3) Unless otherwise provided, the copyright in a collective work or accruing to
an entity for which the work has been made shall lapse 50 years after the first
disclosure or publication.
(4) The term of the copyright accruing separately to the intellectual creators of a
work of joint authorship or collective work  in relation to their recognisably personal
contributions shall be that provided for in paragraph (1) of the preceding Article.
Article 23.
Anonymous Works and Works Deemed Anonymous
(1) The copyright in an anonymous work or a work disclosed or published
without the true identity of the author being revealed shall lapse 50 years after thedisclosure or publication.
(2) Where the use of a name, while not the author's own, leaves no doubt as to his
identity or where he reveals it within the period referred to in the preceding paragraph,
the term of protection shall be that granted to works disclosed or published in theauthor's own name.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 38
Article 24.
Protection of Parts, Volumes or Instalments of Works
(1) Where the various parts, volumes or instalments of a work are not published
simultaneously, the copyright terms shall calculated separately.
(2) The preceding paragraph shall also apply to issues or instalments of a
collective work published periodically, such as a newspaper or magazine.
Article 106.
Lapse of Copyright
The copyright in an audio-visual work shall lapse 50 years after its disclosure.
Article 182.
Lapse
The rights of performers shall lapse 50 years after the performance.
Article 188.
Lapse
The rights of producers of phonograms and videograms shall lapse 50 years after
fixation.
Article 192.
Lapse
The rights of broadcasting organizations shall lapse 20 years after the broadcast.
8. Please describe the protection the copyright law and neighbouring rights law of Macau
provides for performers, and give the term of the protection.
Performers have the rights stated in Article 178 ° of the Copyright and Neighbouring Rights
Law:
Article 178.
Rights of Performers
The performer's authorisation shall be required for:
(a) the broadcasting or the communication to the public, by any means, of his
performance, except where the performances used have already been broadcast or
fixed;
(b) the fixation of performances that have never been fixed;
(c) the reproduction of a fixation of his performances that has not been authorized
where the reproduction is for purposes different from those agreed to, or where the
fixation has been made under the provisions of Article 173 and the reproduction is forpurposes different from those provided for in that Article.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 39
Regarding the term of protection, please see above Article 182 ° of the Copyright and
Neighbouring Rights Law (in reply to question 7).
9. Article 14.2 of the TRIPS Agreement requires that producers of phonograms be given
the right to authorize or prohibit the direct  or indirect reproduction of their phonograms.
Article 14.2 requires that producers of phonograms have the right to authorize or prohibit the
commercial rental to the public of originals or copies of their phonograms.  Please describe how
the copyright and neighbouring rights law of Ma cau fulfils these obligations and give the term
of protection provided.
The exclusive rights of producers to authorize the direct or indirect reproduction and the
rental of phonograms are explicitly stated in Article 185 °, a) and b), of the Copyright and
Neighbouring Rights Law:
Article 185
Rights of Producers
The producer's authorisation shall be required for:
(a) direct or indirect reproduction of the phonogram or videogram;
(b) distribution to the public of originals or copies, including commercial rental
but excluding lending;
………
Regarding the term of protection, please see above Article 188 ° of the Copyright and
Neighbouring Rights Law (in reply to question 7).
C. TRADEMARKS
10. Article 14.1 of Macau's Decree-Law No. 56/95 provides that a trademark may consist of
one or more words or figurative or emblematic designs that, applied to goods or their
packaging, distinguish those goods from identica l or similar goods.  Article 15.1 provides that
the words in a trademark must be in Portuguese, Chinese, or English.  Please explain how
Macau ensures that trademarks comprising inve nted words, such as Kodak or Xerox, can be
registered and protected in its territory?
The Decree-Law 56/95 was repealed by the new Industrial Property Law enacted by
Decree-Law 97/99, of 13 December 1999, which entered into effect on 6 June 2000.  The relevant
articles are now the 197 ° and 198 °:
Article 197.
(Subject matter of the trademark)
The present Statute can afford protection as a trademark only to a sign or group of
signs which are capable of being represented graphically, namely words, including
personal names, designs, letters, numerals, sounds, the shape of the product or its
packaging, and which are capable of distinguishing the products or services of onecompany from those of other companies.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 40
Article 198.
(Linguistic requirements)
1. Any sayings contained in trademarks shall be written in Portuguese, Chinese
or English, and may combine elements of these different languages.
2. The trademarks of products destined solely for export can be written in any
language, but their use in Macao shall determine when they lapse.
3. The compulsory nature of the use of Portuguese, Chinese or English shall not
apply to applications for the registration of international marks, under the terms of therespective regulation, and to marks whose applicant is not domiciled, headquartered or
established in the Territory.
Words like Kodak and Xerox should not be considered as "sayings" for the purpose of
Article 198 °, 1.  The question does not even arise in the cases in paragraphs 2 and 3 of the article.
11. Article 43(d) of Decree-Law No. 56/95 authorizes refusal of a trademark registration
because the applicant is likely to practice unfair  competition, or if this might occur for reasons
beyond his control.  Please describe in detail what is envisioned by this section, describe the
procedure followed to establish such a likelihood, and give examples indicating the scope of the
authorities.
The relevant legislation is now Article 9 °, 1, c) of the Industrial Property Law which is
similar to Article 43 °, d), of Decree-Law 56/95, repealed by the former.  Unfair competition is seen as
a general border to industrial property.  The various acts that are considered as unfair competition are
listed in Articles 156 °-173 ° of the Commercial Code, enacted by Decree-Law 40/99/M, of 3 August.
Regarding trademarks, especially relevant is Article 159 °, 1:
"It is considered unfair every act that is able to create confusion with the enterprise,
the products, the services or the goodwill of the competitors."
Thus this is one more argument for the administration to refuse the registration of a trademark
that is not able to make the distinction between products or services.  Considering that the same result
may be achieved by the application of the intellectual property legislation alone, the unfaircompetition exception has not been used in the practice.
12. Article 45.1 of Macau's Decree-Law No. 56/95 enables owners of marks that are well-
known in Macau to oppose the registration of a trademark that is identical or similar or a
translation of that mark when used on identica l or similar goods.  Article 74.1(b) provides for
cancellation of a registration for similar reasons.  Please describe how, in addition to enabling
the owners of well known marks to oppose registrations of trademarks under that Article, the
laws of Macau protect well known trademarks.
The relevant legislation on well known trademarks are now Articles 214 °, 1, b) and c), 230 °,
1, b), 2 and 3, and 291 °, d) and e) of the new Industrial Property Law:IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 41
Article 214.
(Grounds for refusal of registration)
1. Registration of the trademark shall be refused if:
……………………………
(b) An essential part of the trademark constitutes a reproduction, imitation
or translation of another that is well-known in Macao, if applied to identical or
similar products or services and with which it can be confused, or if those
products could establish a connection with the proprietor of the well-known
trademark;
(c) The trademark, although meant for products or services with no
connection, constitutes a reproduction, imitation or translation of a previoustrademark that enjoys prestige in Macao, and whenever the use of the
subsequent trademark tries to derive improper advantage or prestige from the
distinctive character the trademark or could harm such character or prestige.
…………………………
4. A party interested in the refusal of the registration of the trademark referred to
in sub-paragraph 1(b) may intervene in the respective proceedings only if it can prove
that it has already applied for the respective registration in Macao or if it does so
simultaneously with the refusal request.
5. A party interested in the refusal of the registration of the trademark referred to
sub-paragraph 1(c) may intervene in the respective process only if it already provesthat it has already applied for the respective registration in Macao of the products or
services that conferred prestige upon it, or it does so simultaneously with the
complaint.
Article 230.
(Annulment of the trademark registration)
1. Mark registrations may be nullified (……) when the title was granted:
…………………………
(b) In breach of the provisions of article 214(1(b) and (c)) and (2).
2. Any party interested in the annulment of a trademark in order to protect well-
known trademarks may intervene in the proceedings only on proving that the
respective registration has already been requested in Macao or by simultaneously
filing the annulment request.
3. Any party interested in the annulment of a trademark in order to protect
prestige marks may intervene in the process only by proving that the respective
registration has already been requested in Macao for the products or services that
conferred such prestige or by simultaneously filing the annulment request.
………………………………IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 42
Article 291.
(Counterfeiting, imitation and illegal use of trademark)
Obtaining illicit benefit for oneself or for a third party within the context of an
entrepreneurial activity withou t the consent of the holder of the industrial property
right shall be punishable by a prison sentence of up to 3 years or by a fine
accumulating for from 90 to 180 days in the following cases:
…………………………………
(d) Using, counterfeiting or imitating well-known trademarks whose
registration has already been applied for in Macao;
(e) Using trademarks, even though in products or services bearing no
identity or likeness, which are a translation, the same as or similar to previoustrademarks whose registration has been applied for and which enjoy prestige
in Macao, whenever the use of the subsequent trademark seeks, without fair
reason, to derive improper advantage from the distinctive character or the
prestige of the previous trademark or can in any way damage it.
……………………………………
Trademark owners are also indirectly protected by the legislation on unfair competition.
13. The English text of Article 69.1 of Macau's Decree-Law No. 56/95, contained in
IP/N/1/MAC/T/1, refers to "the right to the invention".  Please confirm whether this is a
mistranslation and that "trademark" is the correct term.
Yes, it was a translation mistake.  Nevertheless that law is no longer in force.
14. Article 76 of Macau's Decree-Law No. 56/95 provides criminal penalties for
infringement of a trademark.  Please describe in detail and cite to the provisions under which
the owner of a registered trademark can bring a civil action against one who infringes the
registered mark.
The relevant legislation is now Article 291 ° of the new Industrial Property Law.  Civil
remedies and civil actions are mainly ruled by the Civil Code (enacted by Decree-Law 39/99/M, of
3 August) and Civil Procedure Code (enacted by Decree-Law 55/99/M, of 8 October) respectively.
To sum up:
(a) the owner whose trademark rights were infringed, or are in danger of being infringed,
has the right to a civil action purported to affirm his rights, or to prevent its infringement, or
to repair an infringement already accomplished, or to make his rights effective by coercive
means (article 1 °, 2, of the Civil Procedure Code);
(b) the infringement of a trademark right is a also a tort, making the offender civilly
liable (article 477 ° of the Civil Code).
D. G
EOGRAPHICAL INDICATIONS
15. Article 252.1(a) of Macau's Decree Law No. 16/95 states that applications for
appellations of origin or geographical indications must indicate the name of the individual
persons or corporate bodies, public or private, with capacity to acquire the registration.  Please
explain what factors determine who or what bodies have the capacity to acquire such
registration and who or what bodies may file such applications for registration.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 43
The Decree-Law 16/95 was also replaced by the new Industrial Property Law.  The relevant
article is now :
Article 255.
(Registration application)
1. The application for registration of a designation of origin or a geographical
indication shall be filed, in writing, in the official language of the Territory, indicating
the name of the individuals or bodies corporate, public or private, that are entitled to
acquire the registration and shall be accompanied by the following information:
(a) the name of the product or products on which it is intended to use the
designation of origin or geographical indication;
(b) the traditional or regulated conditions for the use of the designation of
origin or the geographical indication and the limits of the respective locality or
region.
2. The registration certificate shall, in the pertinent part, bear the text of the
registration process of the name and emblem of the establishment.
This article must be interpreted in accordance with Article 254 °, 3, which states:
Designations of origin and geographical indications, when registered, shall constitute
the common property of the residents or persons who are actually and seriously
established in the region in question and may be used indiscriminately by persons
who, in that region, exploit any characteristic area of production when duly authorized
by the holder of the registration to do so.
It is assumed in the law that the registration of geographical indications may only be filed by
entities legally recognized as representative of the concerned geographical area in order to avoid the
acceptance of registrations filed by any one who does not have any connection with the reality that the
indication purports to protect.
E. INDUSTRIAL DESIGNS
16. Please describe in detail the protection available for textile designs, including the
manner in which rights are acquired, the nature of the rights and their term.
Textile designs may be protected as industrial designs under Articles 150 °-185 ° of the
Industrial Property Law.  Special additional protection (i.e., prior protection) is granted specially to
textiles under Articles 186 °-196 °.
The registration grants the exclusive right to use the design and to prohibit its use by third
parties without the consent of the owner.  The use referred to in the previous paragraph includes,especially, the offering, placing on the market, import, export or use of a product into which that
industrial design is incorporated, or to which it is applied, as well as the storage of that product for the
same purposes.  (Article 177 °).
The duration of the registration shall be 5 years from the date of the application, renewable
for like periods up to the 25 years limit.  (Article 176 °).
The application for prior protection confers a priority right, during 3 months, for the purposes
of registration.  (Articles 191 ° and 192 °).IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 44
F. PATENTS
17. Article 47.2 of Macau's Decree Law No. 16/95 specifies that process inventions are
patentable, but Article 96.2 appears to specify only acts that would enable the owner of a patent
for a product invention to prevent third parties from infringing its patent.  Please explain whatrights are provided to the owner of a process patent and cite to the appropriate provision of law.
The patentability of processes in general is now allowed by Article 61 ° of the Industrial
Property Law:
Article 61.
(Patentability requirements)
Any inventions, in any area of technology, pertaining to products or processes for
obtaining products, substances or compositions, even if they involve a product
composed of biological matter or that contains biological matter or a process that
permits the production, processing or use of biological matter, shall be patentableprovided that such inventions:
(a) be novel;
(b) involve an inventive step; and
(c) be industrially applicable.
The rights of the owner regarding process patents are in Articles 101 °, 2 and 4, and 104 °:
Article 101.
(Scope of protection)
………………
2. If the subject matter of the patent concerns a process, the rights conferred by
that patent shall include the products directly obtained by the patented process.
………………
4. The protection conferred by a patent relating to a process for producing a
biological material endowed by the invention with certain properties, shall extend to
biological material directly obtained by that process and any other biological material
obtained from the directly obtained biological material, by reproduction ormultiplication, in identical or differentiated form, and endowed with those same
properties.
………………
Article 104.
(Rights conferred by the patent)
1.  Upon becoming valid, the patent shall confer on its holder:
(a) The exclusive right to exploit the invention in the Territory;(b) The right to oppose any acts that constitute a breach of his patent, and
specifically to prevent third parties, without his consent, from manufacturing,
offering, storing, marketing or using a product covered by the patent, or
importing or owning the same for any of the mentioned purposes.
2. The rights conferred by the patent may not exceed the scope defined for the
claims.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 45
3. The patent shall be granted with no guarantee as to the accuracy of the
descriptions and its validity may not be presumed by virtue of the fact that the
respective certificate was granted.
18. Article 101 provides for compulsory licences with regard to patents granted for
subject-matter that constitutes a legal monopoly.  Please identify the legal monopolies that exist
in Macau.  In addition, please explain in detail  how each of the criteria established by Article 31
of the TRIPS Agreement is met.
In the legislation currently in effect there is no stipulation similar to Article 101 ° of
Decree-Law 16/95.  We reproduce below Articles 109 °-116 ° of the Industrial Property Law, that
concern specifically compulsory licences:
Article 109.
(Mandatory licences – admissibility)
By ruling of the Governor, mandatory non-exclusive licences can be granted for a
certain patent in any of the following cases:
(a) No or inadequate exploitation of the patented invention;
(b) Interdependence of patents;
(c) For reasons of public interest.
Article 110.
(Mandatory licences - general rules)
1. Mandatory licences can be granted only when the potential licensee has made
efforts to obtain a contractual licence from the patent-holder on acceptable
commercial terms and such efforts have not been successful within a reasonable
period.
2. While a mandatory licence is in force, the patent-holder cannot be compelled
to grant another licence before the mandatory licence has been cancelled.
3. The holder of the patent for which a mandatory licence is issued shall be
entitled to:
(a) An appropriate remuneration in each concrete case, bearing in mind
the economic value of the licence;
(b) Request the judicial revision of the decision to grant or refuse such
remuneration.
4. Mandatory licences may be assigned only with the part of the company or of
the establishment that exploits them.
5. The title-holder of a patent in respect of which a mandatory licence has been
issued shall, when granting the licence, provide the licensee with all the elements of a
technical nature of which he is aware at that moment and that are necessary for theexploitation of the invention.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 46
Article 111.
(Mandatory licences issued in the case of no or inadequate exploitation of the patent)
1. If a patent is not or is inadequately exploited, there shall lie grounds to apply
for a mandatory licence if the patent-holder, without good or legal reason, by 4 yearsfrom the date of the patent application or 3 years from the date of the granting,
whichever the longer:
(a) Has not begun exploitation or made effective preparations to that end,
nor granted licences for the patented invention in the Territory or in any other
country or territory member of WTO;
(b) Has not exploited the invention in such a way that the results satisfy
the market requirements in the Territory.
2. Another ground for requesting a mandatory licence shall be the patent-holder's
failing, without good legal reason, to exploit the invention, either in Macao or in any
other country or territory member of WTO, during 3 consecutive years.
3. Good reasons shall be deemed to be objective difficulties of a technical or
legal nature, independent of the will and situation of the patent-holder, that make itimpossible to exploit or sufficiently exploit the invention, but not economic or
financial difficulties.
Article 112.
(Interdependent licences)
1. When the exploitation of an invention protected by a patent is not possible
without damaging the rights conferred by a prior patent, the mandatory licence may be
granted only if the subsequent invention represents a notable technical progress over
the prior invention.
2. Once the mandatory licence has been granted, either of the licence-holders
shall be entitled to request a mandatory licence on the patent of the other.
Article 113.
(Public interest)
1. A mandatory licence for the exploitation of an invention can be granted in the
public interest.
2. Public interest is deemed to obtain when the beginning, the increase or the
generalisation of the exploitation of the invention or the improvement of the
conditions in which the invention is exploited are of primordial importance for publichealth or safety.
Article 114.
(Application for mandatory licences)
1. Application for the granting of a mandatory licence shall be filed with the
DES, accompanied by the necessary elements proving the respective grounds.
2. Applications for mandatory licences shall be examined in the order in which
they are filed with the DES.
3. Once the DES has received the application for a mandatory licence, it shall
notify the patent-holder in order that, with in 2 months, he/it may state what he/it
wishes to do, submitting the respective proof.
4. The DES shall then have 2 months to analyze the arguments advanced by the
parties and the guarantees offered by the applicant for the mandatory licence that itIP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 47
will exploit the invention, to prepare the corresponding opinion and to submit the
proceedings for the Governor's decision, which shall be handed down within 1 month.
5. When the mandatory licence application is based on the public interests
referred to in the previous article, the process shall be submitted to the Governor'sappreciation only after having obtained the opinion of the Science, Technology and
Innovation Committee and, if applicable, of the Health Services of Macao or of the
Directorate of the Macao Security Services, and after the title-holder has had a chance
to take a stand on the tenor of those opinions.
6. The deadlines for the issue of the opinions and the patent-holder's answer,
under the terms of the previous paragraph, shall be set by the DES at 1 to 3 months.
7. If the application is deferred, the DES shall appoint an expert and notify both
parties in order that, within 1 month, they name their experts, it then being up to the
three experts, within 2 months, to agree on the conditions of the mandatory licence
and the remuneration to be paid to the patent-holder.
Article 115.
(Cancellation and re-appreciation of the mandatory licence)
1. The mandatory licence can be cancelled if:
(a) The licensee does not abide by the conditions imposed on granting or
the purposes for which it was granted;
(b) The circumstances on which the granting was based no longer obtain
and are unlikely to be repeated.
2. The initiative to introduce proceedings to cancel the licence shall lie with the
DES, with the patent-holder and, where applicable, with the other licensees.
3. The patent-holder shall be entitled, with good reason, to request the re-
appreciation of the conditions and circumstances under which the mandatory licence
was granted.
Article 116.
(Notification and appeal with respect to the granting, refusal or cancellation of licence)
1. The DES shall notify the parties of the granting and respective exploitation
conditions, as well as of the refusal or cancellation of the licence.
2. Appeal to the competent civil court sha ll, within 3 months of the date of the
notification, lie against the decision by the Governor to grant, refuse or revoke the
mandatory licence, or just against the conditions on which it was granted.
3. The granting shall take effect only after the decision has become final and has
been registered by the DES and after proof of payment of the fees due have been
produced, as if it were an ordinary licence.
4. An extract of the registration referred to in the previous paragraph shall be
published in the Official Bulletin.
19. Article 102 of Macau's Decree Law No. 16/95 expressly provides for expropriation of
patent rights for a public purpose and on payment of an indemnity.  Please explain why such a
provision is thought necessary given the flexibility provided by Article 31 and indicate what
provisions under the TRIPS Agreement wo uld authorize such expropriation.
Expropriation is now in Article 108 ° of the Industrial Property Law:IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 48
Article 108.
(Loss and expropriation of the patent)
1. Anyone can be legally deprived of a patent who has to meet commitments
contracted with another or who has had it expropriated for a public purpose.
2. Any patent can, on payment of compensation, be expropriated to be used for
the public good if the need to disclose the invention or to make it available for use by
public entities so demands.
3. The terms of the Statute of Expropriation for the Public Good, pursuant to
Decree-Law Nº. 43/97/M, of October 20 1997 shall apply mutatis mutandis.
Besides compulsory licences, the legislator decided to keep the possibility of expropriating a
patent like any other property.  The measure has not been used in practice.  We do not find any
provision in the TRIPS Agreement forbidding the expropriation.
20. Article 103 provides for the grant of a compulsory license if the patentee fails to "work"
the invention in Macau or in the territory of  the European Community.  Article 104 appears to
require that manufacture take place in Macau or the territory of the European Community.  In
light of the requirements of Article 27.1 of the TRIPS Agreement, please verify that the working
requirement can be satisfied by importing the product into the territory of Macau.  If that is not
the case, please explain how this discrimination based on whether a product is imported or
locally produced can be justified in light of the prohibition of such discrimination in Article 27.1
of the TRIPS Agreement.  In addition, please  explain how the exception for working in the
territory of the European Community, without ex tending such exception to working within the
territory of all other WTO Members can be justified in light of Article 4 of the TRIPS
Agreement.
In the legislation now in force there are no provisions like the ones mentioned in the question
(Articles 103 ° and 104 ° of Decree-Law 16/95).
21. Article 104.1(b) and Article 106 provide for compulsory licenses to be granted for export
production.  Please explain how this can be justified in light of Article 31(f) of the TRIPS
Agreement.
There is no such provision in the legislation now in effect.
G. LAYOUT -DESIGNS OF INTEGRATED CIRCUITS
22. Please explain in detail the protection pr ovided for integrated circuit layout-designs
under the laws of Macau.
Layout-designs are protected in Macau by a sui generis  right.  We reproduce below the
relevant Articles (136 °-149 ° of the Industrial Property Law):IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 49
Article 136.
(Subject matter of protection)
1. Under the present Statute only the topographies of semiconductor products
resulting from the intellectual effort of the creator and not known in thesemiconductors industry can be protected by the granting of a topography registration
certificate.
2. Likewise, topographies that comprise  elements known in the semiconductor
industry and the combination of whose elements taken together meet the conditions
envisaged in the previous sub-paragraph shall also enjoy legal protection.
3. The protection shall cover only the configuration of electronic circuits, to the
exclusion of any idea, process, system, technique or codified information incorporateinto the topography.
Article 137.
(Definition of semiconductor product)
For the purposes of the protection conferred by the present Statute, a semiconductor
product shall be understood as being the final or intermediate form of any product that,cumulatively:
(a) Consists of a material body that includes a layer of semiconductor material;
(b) Possesses one or more layers composed of conductive, insulating or semi-
conducting material, the layers being disposed in accordance with a predetermined
three-dimensional model;
(c) Is designed to carry out an electronic function either alone or together with
other functions.
Article 138.
(Definition of semiconductor product topography)
The topography of a semiconductor product is the group of related images, either fixed
or codified, represented by the three-dimensional layout of the layers of which the
product is composed, and in which each image has the layout or part of the layout of a
surface of the same product, in any phase of its manufacture.
Article 139.
(Temporary limitations on the exercise of the right)
The right to register a semiconductor product topography cannot be exercised if:
(a) 2 years have already elapsed since the first commercial exploitation of the
topography anywhere;
(b) 15 years have already elapsed since the topography was fixed or codified for
the first time, if it was never exploited.
Article 140.
(Additional elements of the application)
In addition to the other elements required, the applicant to register a topography shall
also indicate in the application:
(a) The date on which the topography was fixed or codified for the first time;
(b) Whether the topography has already been commercially exploited and, if so,
the date on which that exploitation began.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 50
Article 141.
(Grounds for refusing to register a topography)
1. A topography registration application shall be refused when:
(a) Any of the general grounds for refusing the granting of industrial
property rights is found as referred to in article 9(1);
(b) The application is not filed in good time, in breach of the deadlines set
in article 139.
2. The grounds for refusal referred to in article 9(1) may be used against the
applicant only if it is apparent from the examination report that the topography cannot
be registered, or if it was not possible to reach any conclusion on whether it could be
registered because the items filed with the application did not permit any conclusion tobe reached because they were inadequate, irregular, contradictory or confused .
Article 142.
(Duration)
The registration shall last 10 years from the date of the respective application or from
the date on which the topography was exploited for the first time anywhere, whicheverthe sooner.
Article 143.
(Rights conferred by registration)
1. The registration of the topography shall confer on the holder the right to make
exclusive use of the topography throughout the Territory by producing,manufacturing, selling or exploiting it or the items in which it is applied, together with
the obligation to do so effectively and in keeping with the needs of the market.
2. The registration of the topography shall furthermore confer on the holder the
right to authorize or to prohibit any of the following acts:
(a) The reproduction of the protected topography;(b) The import, sale or distribution in any other form for commercial
purposes of a protected topography, of a semiconductor product into which is
incorporated a protected topography, or an article into which is incorporated a
semiconductor product of that type, to the extent and only to the extent that it
continues to include a topography reproduced illegally.
Article 144.
(Limitation on the rights conferred by the registration)
1. The rights conferred by the registration of the topography shall not include:
(a) The private reproduction of a topography for non-commercial
purposes;
(b) Reproduction for the purpose of analysis, evaluation or teaching;
(c) The creation of a different topography, starting from the analysis or
evaluation referred to in the previous sub-paragraph, that could in turn benefit
from the protection foreseen in the present Statute;
(d) The performance of any of the acts referred to in article  143(2), in
relation to a semiconductor product in which is incorporate an illegally
reproduced topography or any article in which is incorporate a semiconductorproduct of that type, if the person that performed or ordered the performanceIP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 51
of those acts neither knew nor should have known on acquiring the
semiconductor product or the article into which that semiconductor product
was incorporated, that the said article incorporated an illegally reproduced
topography.
2. Once the person referred to in sub-paragraph 1(d) has received enough
information to indicate that the topography was reproduced illegally, that person can
perform any of the acts in question in relation to the products in his possession or
ordered up to that moment, but must pay the holder of the registration an amount
equivalent to an appropriate royalty such as could be demanded under the protection
of a licence freely negotiated in relation to a topography of that type .
Article 145.
(Indication of the registration)
During the validity of the registration, the holder may mark semiconductor products
manufactured by the use of protected topographies with a capital letter "T", in one of
the following forms:
T, T ", [T], T, T* or  T
Article 146.
(Mandatory exploitation licence)
The provisions of articles 109 to 116 shall apply to the topographies of semiconductor
products only when the mandatory licence s have a public, non-commercial purpose.
Article 147.
(Nullity of the topography registration)
In addition to the general causes of nullity of industrial property rights foreseen in
article 47, semiconductor product topographies registrations may also be declared nulland void because:
(a) The title or short title given to the invention includes different subject matter;
(b) The subject matter is not described in such a way as to permit the execution of
the topography by a person skilled in the art;
(c) The subject matter of the registration extends beyond the content of the initial
application.
Article 148.
(Partial nullity or cancellation)
1. One or more claims may be declared null or cancelled, but a claim cannot be
decreed partially nullified or cancelled.
2. If a topography registration is declared nullified or partially nullified, it shall
remain in force in its remaining parts whenever they can constitute subject matter ofan independent topography registration.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 52
Article 149.
(Referral)
Provided that they are not incompatible with the nature of semiconductor product
topographies, the provisions of section I of the previous chapter shall apply thereto,
with the special considerations set forth in the present chapter.
H. UNDISCLOSED INFORMATION
23. Article 260(i) appears to make misappropriation of trade secrets a crime and establishes
maximum penalties.  Please describe the information that would comprise an industry or trade
secret and indicate the nature of the proof required to demonstrate that misappropriation hastaken place.
Trade secrets are now protected as a tort under the Commercial Code (enacted by Decree-Law
40/99/M, of 03 August 99) provisions on unfair competition.  Trade secrets are there defined
(Article 166 °, 2) as being any technical or commercial in formation provided it fulfils all the following
requirements:
a) it must have a practical application;
b) it must provide an economic advantage to the owner;
c) it must not be known by the public;
d) the owner must have taken the safety measures required to keep it confidential.
The misappropriation may proved by any kind of proof legally acceptable: documents,
witnesses, etc.
24. Please describe in detail the protection provided data required to be submitted to obtain
marketing approval for agricultural chemicals and pharmaceuticals, indicating the responsible
government agency and citing to the relevant provisions of law.
The marketing of pharmaceutical products in Macau depends on the submission to the Macau
Health Services of information that may be comprehended in the concept of data mentioned in
Article 39.3 of the TRIPS Agreement (e.g., succin ct description of the manufacturing process,
chemical composition and the result of some scientific tests).  All this data is classified as confidential
(Decree-Law 58/90/M, of 19 September) and its breach by a civil servant is a crime punishable with
imprisonment up to three years or fine (Article 348 ° of the Criminal Code).
Moreover the data are protected against unfair commercial use under the Commercial Code
provided they fulfil the requirements in its Article 166 °, 2, (please see reply to question 23).
Regarding agricultural chemical products, there is no agricultural activity in Macau and
consequently there is neither local market for agricultural products nor legislation about it.
I. E
NFORCEMENT – GENERAL OBLIGATIONS
25. Please briefly describe how the Macau meets the requirements of Articles 41.1, 41.2,
41.3 and 41.4 of the TRIPS Agreement.  In particular, please explain how the laws of Macau
provide for effective action against infringement of intellectual property rights as required byArticle 41.1 of the TRIPS Agreement.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 53
Generally speaking, intellectual property rights in Macau are simultaneously protected by
three layers of legislation that may partially overlap:
a) under the civil law every infringement of a intellectual property right is a tort and gives
to the owner a right to the repair of damages, either economic or personal;
b) under the criminal law the non-authorized reproduction of protected subject matter in a
commercial scale, as well as other types of infringement, are punished with criminal
sanctions, usually jail terms or criminal fines;
c) under the administrative law there are obligations vis-à-vis  the Administration (e.g. the
obligation of optical discs retailers and manufacturers to apply for a licence before
starting their activity) whose infringement is punished with an administrative fine.
Though the right owners, or their representatives, must take the initiative if they want to
benefit from the private law protection, the authorities shall act ex officio  whenever a criminal or
administrative infringement is at stake.
The civil law and the criminal law are coercively applied, whenever necessary, by means of a
three-tiered judicial system.  An appeal to a higher court is guaranteed.
The administrative law is enforced by the Administration, from whose decisions may be
appealed to the Administrative Court.  The latter is one of the courts that constitute the lowest rank of
the judicial system.
Both the decisions taken by the courts and the decisions taken by the Administration are
written and reasoned.  The obligation of hearing any party against whom a decision may be taken is a
general principle of the legal system and is effective in civil procedure law, criminal procedure lawand administrative law.  The only exception lies in the cautionary procedures, i.e. urgent and
simplified civil procedures where a decision may exceptionally be taken inaudita altera parte  and
whose fate is dependent on a main civil action that must be filed within a short time.
26. Please identify which courts have original jurisdiction over intellectual property
infringement cases, and which courts have appellate jurisdiction to review their decisions?What legal limitations are placed on the ability of a party to have procedural rulings and final
decisions reviewed by the appellate bodies you have identified?  (Article 41 of the TRIPS
Agreement)
Torts and criminal infringements are both the original jurisdiction of the Base Judicial Court,
i.e. the court with generic jurisdiction in the lowest  rank.  Its decisions may be reviewed by the Court
of Second Instance (2
nd rank) or the Court of Final Appeal (3rd rank).
The possibility of filing an appeal from a judicial decision taken in a civil action depends
fundamentally on the value of the case.  However there are decisions that may be appealed
irrespective of the value (e.g. whenever the decision is taken against binding jurisprudence).
J. ENFORCEMENT - CIVIL AND ADMINISTRATIVE PROCEDURES AND REMEDIES
27. Macau's Decree-Law No. 16/95 appears to pr ovide for criminal actions and penalties for
infringement of rights covered by the agreement,  but does not spell out the procedures for civil
enforcement.  Please provide details regarding th e civil procedures used for enforcing industrial
property rights.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 54
Civil procedures in Macau are mostly contained in the Civil Procedure Code (enacted by
Decree-Law 55/99/M, of 8 October) which applies to  intellectual property, as well as to any other
field of civil law.  It is impossible to comprehend in this reply all the details regarding civil
procedures. Basically, a civil action is available to enforce every intellectual property right and thejudicial decisions may be appealed to a higher court depending on their value.
28. Please describe the procedures followed by the courts and/or administrative bodies for
notifying defendants that civil judicial proceedings have been initiated against them.  Also,
describe the type of information provided in the notice.  (Article 42 of the TRIPS Agreement).
The first notification of the defendant is a fundamental part of the civil procedure.
Articles 180 °-199 ° of the Civil Procedure Code are only about that initial notification.  It may be done
in different ways depending on the circumstances, namely:
a) by means of registered mail, being this one the normal situation.
b) personally by an officer of the courts;
c) by the publication of an edit, either when the location or the identity of the all the
defendants is not known.
The notification must include (Civil Procedure Code, Article 181 °):
a) information that a suit was filed against him;
b) a copy of all the documents delivered to the court by the plaintiff;
c) the identification of the court where the suit was filed;
d) the term that the law grants for the defendant  to produce his defence;
e) information about whether representation by a lawyer is required;
f) information about the legal consequences in case the defendant does not present any
defence.
29. Do parties have the right to be represented by independent legal counsel in civil judicial
and administrative intellectual property cases,  and are there any limitations on that right?
Please describe any special requirements concerning mandatory personal appearances by
parties.  (Article 42 of the TRIPS Agreement)
Parties may always be represented by a lawyer in civil and administrative procedures in
general.  Personal appearances are only mandatory in criminal files and in administrative proceduresrelated with the application of sanctions.
30. What requirements must a foreign party meet to initiate a proceeding in the courts and
administrative bodies identified that is not re quired of a national or resident of your country?
There are no special requirements.
31. Please describe any limitations on a party's ability to substantiate a claim or to present
relevant evidence in civil judicial and administrati ve intellectual property cases.  (Article 42 of
the TRIPS Agreement).IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 55
We do not understand clearly to what kind of limitations prohibited by Article 42 of the
TRIPS Agreement the question refers.
32. Please describe the mechanisms for identify ing and protecting confidential information
in civil judicial and administrative intellectual  property cases.  (Article 43.1 of the TRIPS
Agreement).
The protection of confidential information is protected by the prohibition of divulging or
using secrets that binds not only civil servants bu t also anyone who becomes aware of the secret due
to professional reasons. The breach of such prohibition is a crime punished by the Criminal Code
(Articles 189 °, 190 ° and 348 °).
33. What provisions ensure that intellectual pr operty infringement cases are handled in an
expeditious manner and what provisions are available to prevent deliberate delays by the
parties to a proceeding?  Under what circumstances are such provisions applied?
In civil proceedings the court has the power to fine and condemn in damages the party who,
either with deliberate intention or mere negligence (Civil Procedure Code, Articles, 385 °-388 °):
a) makes a claim that he knows to be unfounded;
b) lies or conceals facts that he knows to be relevant to the decision of the court;
c) seriously infringes the duty of cooperation with the court;
d) uses the proceedings in a reproachable way, namely to achieve an illegal purpose, to
prevent the finding out of the truth, to impair the activity of the court or to delaywithout a serious reason the conclusion of the proceedings.
34. Please describe how and under what circumstances judicial and administrative officials
may order parties to produce relevant evidence in  civil judicial and administrative intellectual
property cases.  What types of evidence or information may be required to be disclosed prior to
trial and how long does this pre-trial disclosu re period generally last?  (Article 43.2 of the
TRIPS Agreement).
A party in a civil proceeding may ask the court to notify the other party to present any
document ( lato sensu ) in his possession and that the former wants to use as evidence (Civil Procedure
Code, Article 455 °).  The concept of document  means the material carried of any information (Civil
Code, Article 355 °).
The refusal to deliver the document to the court has the following consequences (Civil
Procedure Code, Articles 456 ° and 442 °, 2):
a) the party who refuses to deliver the document shall be fined, irrespective of the use by
the court of any coercive legal means to obtain the document;
b) the behaviour of the party who refuses to comply shall be freely appreciated by the
court in its decision;
c) the burden of proof shall be inverted.
Regarding the production of evidence before the trial, the law allows the recording of
declarations, the inspection by the court and the inspection by experts before the trial, and even beforeIP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 56
the filing of the suit, whenever there is the danger that the relevant evidence will become very
difficult to produce (Civil Procedure Code, Article 445 °).
35. What kinds of actions may judicial and administrative officials take if the party fails to
provide the necessary information?  Describe the circumstances under which those actions  are
normally imposed in civil judicial and administra tive enforcement actions.  (Article 43.2 of the
TRIPS Agreement).
Please see the first part of the reply to question 34.
36. Do judges and administrative officials ha ve the authority to issue injunctions (or
equivalent measures) to order a party to desist from an infringement and to prevent infringinggoods from entering the channels of commerce?  Please describe, in detail, the procedures for
issuing such injunctions.  (Article 44.1 of the TRIPS Agreement)
The means available to the right owner depend on whether the infringing activity has criminal
nature.  Since the non-authorized reproduction and trade of protected subject-matter in general is a
crime, according to the relevant provisions in the Industrial Property Law and the Copyright andNeighbouring Rights Law, on most of the cases the infringing activity does have criminal nature.
Whenever there are hints of the criminal nature of an act the police authorities certainly have
the power to do whatever necessary to stop the infringement and to seize the products of the crime.
They must do it ex officio , notwithstanding the possibility of a denunciation by the right owner or by
anyone else.  There are no special formalities to this denunciation and it may even be made verbally
(Criminal Procedure Code, Articles 227 ° and 229 °).
Furthermore to the crimes in the Industrial Property Law (e.g. non-authorized import of
trademarks) it is applicable, ex vi  Article 298 °, the Article 18 ° of Law 6/96/M, of 15 July.  According
to the latter, the court may order ex officio  to an infringer to stop immediately a criminal infringement.
Though it is an ex officio  proceeding, the right owner may ask it to the court, with whom shall lie the
final decision.  Non-compliance with the injunction is a crime of disobedience.
Irrespective of the criminal nature of the infringing activity, the right owner may finally use
the urgent civil proceeding in Articles 326 °-337 ° of the Civil Code to ask to court to order an infringer
to stop an infringement that may cause him damage.  This urgent procedure may also be used
simultaneously with a criminal action.
37. How long in practice does it generally take to obtain the injunctive relief (or equivalent
measures) from the time of the application to its grant?  What evidence must typically be
provided to establish a party's right to each of the types of relief identified and what  are theconditions imposed on obtaining such reli ef?  (Article 44 of the TRIPS Agreement).
We do not have statistics about the average time.  The law does not limit the evidence that
may be presented.
38. Article 44.2 provides an exception to the requirement in paragraph 1 for government
use or use by third parties authorized by the government, limiting the remedy for infringement
to payment of adequate remuneration as prov ided in Article 31(h).   Are there any such
limitations on remedies in the laws of Macau?
There are no such limitations (notwithstanding the "normal" compulsory licences).IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 57
39. Please explain whether judicial  and administrative officials have the authority to order a
party found to be infringing to pay the right holder damages adequate to compensate for the
injury caused by the infringement and expenses , including attorney's fees.  What factors are
considered in establishing the amount of damages?  (Article 45 of the TRIPS Agreement).
Under the legislation on civil liability, judicial authorities have the power to condemn in
damages every person that infringes an intellectual property right, provided the infringement really
caused damages to the right owner.  The amount of the indemnity depends only on the amount of real
damages that the right owner manages to prove, the concept of damages  comprehending not only the
damage directly caused by the infringing act but also the economic advantages that the right owner
was prevented from obtaining because of that very act ( ceasing profits ).  Future damages may also be
taken into consideration by the court whenever they are foreseeable (Civil Code, Articles 477 °-491 °
and 556 °-566 °).
Exceptionally, whenever the infringement was due to mere negligence and not to deliberate
intention (i.e. dolus ), and taking into consideration the degree of fault, the economic situation of the
infringer and other circumstances of the case, the indemnity awarded by the court may be lesser than
the real amount of the damages (Civil Code, Article 487 °).
Regarding attorney’s fees, Article 383 ° of the Civil Procedure Code authorizes the attorneys
to claim the payment of their fees, totally or partially, by means of the judicial fees that his client has
the right to receive from the other party.
40. Please describe any additional remedies (e.g. disposal of goods and destruction of
materials and implements used to create infr inging goods) that judicial and administrative
officials may impose in civil judicial and admi nistrative intellectual property cases, the
circumstances under which those remedies will be imposed.  What factors are considered in
determining which kind of remedy to impose?  (Article 46 of the TRIPS Agreement).
The kind of measures mentioned in the question, namely the forfeiture and destruction of
counterfeited goods, are not available in civil proceedings.  They are typical of criminal proceedings.
However, considering that:
a) the relevant infringements that cause a damage to the right owner (e.g. non-authorized
reproduction of subject matter) are simultaneously a crime in Macau;  and that
b) the right owner is allowed to claim the indemnity for damages in the criminal proceeding,
a mere civil proceeding will hardly result from a relevant infringement.
Furthermore the right owner may intervene in the criminal proceeding as assistant , i.e. a kind
of collaborator of the Public Prosecutor, to whom he is submitted. As assistant  the right owner has the
right to offer any evidence, to ask for any diligence of the court, to make an accusation different from
the accusation of the Public Prosecutor and to file appeals from the court decisions (Criminal
Procedure Code, Articles 57 °-59°).
In the criminal proceedings the court shall forf eit any goods that were produced by the crime
and any instruments that were used for the criminal purposes and may order its destruction (Criminal
Code, Articles 101 °-104 °, and Industrial Property Law, Article 296 °).
The court shall also seize any value or economic advantage acquired by the infringer by
means of the crime (Criminal Code, Article 103 °).IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 58
Whenever the right owner claims an indemnity  in the criminal proceeding and the indemnity
is not paid by the infringer, the court may award to the former the goods or values that were forfeited
(Criminal Code, Article 122 °).
Accessory criminal penalties may also be imposed to the infringer: bail (i.e. a certain amount
deposited by the infringer that will be forfeited in case of new infringement), temporary prohibition of
certain professions or activities, temporary or definitive closure of the commercial establishment and
publication of the sentence (Law 6/96/M, of 15 July, applicable ex vi  Article 298 ° of the Industrial
Property Law, and Articles 203 °-208 ° of the Copyright and Neighbouring Rights Law).
Finally, forfeiture of goods and prohibition of certain activities can also be applied to the
infringers of specific administrative rules on the manufacture and trade of optical discs (obligation of
using the SID code, obligation of keeping records of production, etc.)
41. Please indicate whether judicial and administ rative officials have the authority to order
infringers to provide right holders with inform ation on third parties involved in the production
and distribution of infringing goods or services and their channels of distribution and describe
the circumstances under which such authority is exercised?  (Article 47 of the TRIPS
Agreement).
Judicial authorities do not have such possibility in general.  Nonetheless whenever the
infringement is a criminal one the relevant information will probably be disclosed in the proceedings.
42. Please explain whether public authorities and officials are exempt from liability for
abuse of enforcement procedures and describe the circumstances in which such exemptions do
apply.  (Article 48 of the TRIPS Agreement).
They are not exempt.
K. ENFORCEMENT - PROVISIONAL MEASURES
43. Please identify the provisional measures available under the laws of Macau to prevent
an infringement of any intellectual property right occurring and to preserve reserve relevant
evidence in regard to an alleged infringeme nt.  (Article 50 of the TRIPS Agreement).
In general, whenever the infringement is of criminal nature, as it is usually the case, both the
police authorities and the Public Prosecutor can take, either ex officio  or following a denunciation, any
measures necessary to avoid the accomplishment of the crime (including the arrest of persons) and topreserve the evidence.
Irrespective of any crime, the right owner may always use the urgent proceedings provided in
the Civil Procedure Code to prevent the accomplis hment of any infringement to his intellectual
property rights.  He may also require the production of evidence in advance (Articles 444 ° and 445 °
of the Civil Procedure Code).
44. Please briefly describe:
(a) any requirements to establish "irrep arable harm" to the right holder.
(Article 50.2 of the TRIPS Agreement)
b) factors considered by judicial and administrative authorities in determining
whether a "demonstrable risk of evidence being destroyed exists".  (Article 50.2
of the TRIPS Agreement).IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 59
a) The law does not establish any requirements regarding the definition of irreparable
harm ;
b) the production of evidence in advance in civil proceedings may be required whenever
there are grounded reasons to believe that later it will be very difficult, or evenimpossible, the hearing of certain persons or the confirmation of certain facts by
means of inspection either by the court or by experts (Articles 444 ° and 445 ° of the
Civil Procedure Code).  In criminal proceedings the police authorities must take ex
officio  the measures necessary to preserve the evidence (namely seizing goods) in
accordance with Article 232 ° of the Criminal Procedure Code.
45. For each kind of intellectual property that is the subject of the TRIPS Agreement, what
kind of evidence is required by right holders to establish ownership of the intellectual property
in question and that their right is being infr inged?  (Article 50.3 of the TRIPS Agreement).
There are no special limitations on the evidence that may be used, i.e. right owner may use
any evidence accepted in civil procedure law to prove his ownership.  Regarding intellectual propertyrights dependent on registration, evidence of the ownership of the relevant registration by means of
documents is certainly important.
46. Are right holders required to provide a security or equivalent assurance to protect the
defendant and to provide against abuse and how is that amount determined?  (Article 50.3 of
the TRIPS Agreement).
The court has the power to require the payment of an adequate  security by the right owner
(Civil Procedure Code, Article 335 °, 2).
47. Please briefly describe the following:
(a) the authority judicial and administrative officials have to adopt provisional
measures  inaudita altera parte , and what measures may be adopted inaudita
altera parte .  (Article 50.4 of the TRIPS Agreement);
(b) does the exercise of the authorities identified above require a court order?
(Article 50.4 of the TRIPS Agreement).
a) The judicial authorities may act inaudita altera parte  whenever the hearing of the
other party is liable to impair the effectiveness of the proceeding (Civil Procedure
Code, Article 330 °, 1).  They can order any measure adequate to secure the right at
stake.  The Maritime and Fiscal Police, either ex officio  or following an application,
may also seize in the border any goods whenever there are strong hints that thesegoods infringe rights on trademarks or geographical indications (Industrial Property
Law, Article 286 °);
b) the measures can only be decided by the court, except in the case mentioned in a)
second part.
48. For each of the measures identified above,  generally how long does it take from the
application for such relief until its grant?
There are no statistics available but the measures have priority over the normal work of the
court.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 60
49. Please describe the procedures for notifying affected parties after execution of the
provisional measures and initiating a revie w.  (Article 50.4 of the TRIPS Agreement).
Whenever the measure is taken by the court inaudita altera parte  the affected party is notified
a posteriori  in the same way any defendant is notified for a judicial suit filed against him (Civil
Procedure Code, Article 330 °, 5).
In the case of seizure of goods on the border by the Maritime and Fiscal Police, on the
grounds of infringement to trademarks or geographical indications rights, the interested party should
be notified by the fastest means, i.e. the notification may be done by (Industrial Property Law
Article 286 °, 2, and Criminal Procedure Law, Article 100 °):
a) phone call followed by confirmation by mail;
b) personally by an officer;
c) by mail,
as a last resort, by the publication of an edict.
50. Please describe the kind of information require d from applicants to identify goods which
are the subject of provisional measures.  (Article 50.5 of the TRIPS Agreement).
Applicants may produce any informat ion able to identify the goods.
51. Please describe the nature of the proof required from applicants before such provisional
measures are granted for each type of intellectual property protected under TRIPS.  (Article 50
of the TRIPS Agreement).
Please see reply to question 45.
52. Please describe the procedures for revoking or cancelling provisional measures in
judicial and administrative enforcement actions if proceedings leading to a decision on the
merits of a case are not initiated within a reaso nable time. What constitutes a "reasonable time-
period" to initiate proceedings?  (Article 50.6 of the TRIPS Agreement).
The measures taken by order of the court lapse automatically if the main proceedings are not
initiated within:
a) thirty calendar days after the applicant is notified that the measure was granted;  or
b) whenever the measure was taken inaudita altera parte , ten calendar days after the
applicant is notified that the affected party was notified of the measure (Civil
Procedure Code, Article 334 °).
The seizure by the Maritime and Fiscal Police of goods that allegedly infringe trademarks or
geographical indications rights lapses automatically if its confirmation is not required to the court
within 10 calendar days.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 61
53. Please explain whether judicial  and administrative officials have the authority to order
that the defendant be compensated for any injury  suffered as a result of a lapse or revocation of
provisional measures.  (Article 50.7 of the TRIPS Agreement)
The applicant is liable for any damages suffered by the other party whenever:
a) the measure lapses due to any act or omission of the applicant;
b) in the main proceedings it is proved that the measure was unjustified and that the
applicant was negligent (Civil Procedure Code, Article 335 °).
L. ENFORCEMENT - BORDER MEASURES
54. Please identify the competent authority in Ma cau authorized to accept applications for a
request to suspend release of suspected infringi ng goods.  (Article 51 of the TRIPS Agreement).
If there is a criminal infringement at stake (the usual situation) a denunciation may be made to
the Public Prosecutor, or the Maritime and Fiscal Police or the Economic Activities Inspection (a
department of the Economy Services).
If the right owner wants to use the urgent proceedings in the Civil Procedure Code, an
application must be filed with the Base Judicial Court.
55. Please describe the procedures for protecting intellectual property at the border (e.g.,
application, required information, process and time-frame for notifying applicant of acceptance,
effective period for border enforcement action).  (Article 52 of the TRIPS Agreement).
The control of borders is currently the jurisdiction of the Fiscal and Maritime Police.
However it is expected the creation of a customs service and the enactment of new legislation in the
field in the near future.  In the meantime the suspen sion of goods on the border must follow either the
urgent proceedings provided in the Civil Procedure Law or the general rules of the criminal procedure
law whenever the importation is a crime.  This is assumed in our answers below.
As said above, the urgent civil proceedings must be filed with the Base Judicial Court while
the notice of a crime may be made to the Maritime and Fiscal Police, the Public Prosecutor or the
Economic Activities Inspection.  Any relevant evidence or information may be provided by theinterested party.
56. Please describe any procedures available to stop the export of infringing goods and
goods in transit and cite to the relevant provisions of law.
Please see the reply to the questions above.
57. Please explain what evidence constitutes prima facie  infringement for purposes of
Article 52 of the TRIPS Agreement.
The only guideline on how to interpret the concept of prima facie  is in Article 286 ° of the
Industrial Property Law, according to which the police must seize any goods that contain obvious
signs of infringement to trademarks or geographical indications rights.
58. Please verify that the competent authoritie s identified above are empowered to require
security or equivalent assurance.  (Article 53 of the TRIPS Agreement).IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 62
Whenever the suspension is ordered by the court, as a result of an urgent proceeding, the
payment of security may take place.  Please see the reply to question 46.
59. Please identify what forms of intellectual property, if any, are subject to provisions of
Article 53.2 of the TRIPS Agreement.
The suspension of goods related with the range of intellectual property rights mentioned in
Article 53.2 of the TRIPS Agreement may only occur by decision of the court (exception made
whenever it is a crime).  Therefore it is not fulfilled one of the requirements established in that very
provision.
60. Please describe the procedures in Macau's customs law for notifying applicants of the
suspension of release.  (Article 54 of the TRIPS Agreement).
Being the suspension based on an urgent civil proceeding, the notification will follow the
provisions in Articles 200 °-207 ° of the Civil Procedure Code, i.e. usually it will be sent by registered
mail to the office of the claimant’s attorney.
61. Please identify the fora in which an appl icant/party may initiate proceedings on the
merits that will allow customs authorities to hold the goods beyond ten working days.
(Article 55 of the TRIPS Agreement)
The destiny of the urgent proceedings is dependent on a main civil action to be filed in the
Base Judicial Court.
62. Please explain the procedures for allowing  right holders an opportunity to inspect
suspect goods that have been de tained by customs authorities.   (Article 57 of the TRIPS
Agreement)
The clear implementation of this obligation is dependent on the re-organization of customs in
Macau.
63. Please clarify whether de minimis  imports are excluded from the border measures under
the law of Macau.  What constitutes a de minimis  import?  (Article 60 of the TRIPS Agreement).
The law does not exclude de minimis  imports from the exclusive rights of importation granted
to rights owners, though they are not a crime.  There is no legal definition of de minimis imports.
M. ENFORCEMENT - CRIMINAL PROVISIONS
64. Please explain whether and under what circumstances seizure, forfeiture and
destruction of infringing goods and any materials and implements are available as remedies in
wilful trademark counterfeiting or copyright piracy cases and describe the conditions underwhich such penalties would be imposed.  (Article 61 of the TRIPS Agreement).
Forfeiture and destruction of infringing goods are the rule in criminal proceedings.  Please see
the reply to question 40.
65. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial design, patent, integr ated circuit layout-design, and trade secret
enforcement for each of the years 1998 and 1999, including the number of cases filed;
injunctions issued;  infringing products seized ;  infringing equipment seized;  cases resolved
(including settlement);  and the amount of damages awarded.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 63
The available statistics (see annex) do not correspond exactly to the data asked for in the
question.
66. Please provide statistical information related  to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1998 and 1999, including the
number of raids, prosecutions, convictions, and th e amount of fines and/or jail terms (including
whether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that the criminal system operates effectively to deter
copyright piracy and trademark counterfeiting.
The available statistics (see annex) do not correspond exactly to the data asked for in the
question.
67. Please describe any new initiatives that are planned to improve enforcement of
intellectual property rights in Macau, particularly initiatives related to criminal enforcement.
The initiatives taken in the last few years in  Macau to protect intellectual property have
proved to be successful and have drastically reduced the more serious infringements.  It is our
intention to continue monitoring the application and effectiveness of the intellectual propertylegislation.  We also hope to have in the future a greater help and commitment from the right holders
and their representatives.
VI. CONCLUDING STATEMENT
Generally, the questions we received fell into three groups.  The first group sought an
explanation of how a particular issue is covered in Macau.  These were rather easy to answer.  Thesecond group sought an explanation of a particular point of Macanese law vis-à-vis  a particular Article
of the TRIPS Agreement.  The third group asked for the legal basis in the TRIPS Agreement for a
particular point, and these were the most difficult to answer.  When a Member asks what is the legal
basis in the TRIPS Agreement for something, we  assume that the Member posing the question
considers that the relevant provision in Macanese legislation is incompatible with the TRIPSAgreement.  However, we have to conclude that often this is not the case.
The TRIPS Agreement can be divided into a list of obligations and prohibitions, and a list of
rights and freedoms.  Those rights and freedoms are not only those explicitly set out in the
Agreement, since what is not forbidden by the TRIPS Agreement is in fact allowed.  It is difficult to
establish the border between a freedom and a prohibition but, in cases of doubt, freedom should
prevail.  Borders are the product of a struggle, and this is also true of borders between intangibles
such as those between freedoms and prohibitions under the TRIPS Agreement.  Macau, China hastried in absolute good faith to establish the border between what the TRIPS Agreement allows and
what it forbids.  According to our sense of this border, our Government has established some rules in
its law that might be considered incompatible by other Members.  The discussion on geographical
indications at the present meeting is an example of the ambiguity of international legal texts and of the
different perspectives in their interpretation.
We have received some follow-up questions from the European Communities and their
member States.  Some aspects of our initial responses were not clear, because we had to write them in
a hurry and also because some of the legislation is not available in a WTO working language, such as
the Codes, which are only available in Chinese and Portuguese.  We will supply written responses to
the follow-up questions.IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 64
ANNEX
INTELLECTUAL PROPERTY ENFORCEMENT ACTIONS
1998 1999 2000
(to 31 May)
BY INSPECTION OF ECONOMIC
ACTIVITIES (IEA)
Production locations
No. of actions 346 210 71
No. of optical discs seized: 141,266 8,961 0
- CDs 3,030 352 0
- VCDs 138,235 1,963 0
- DVDs 0 9 0
- CD-ROMs 0 11 0
- Blank optical discs 0 6,626 0
-  S t a m p e r s 100
No. of production lines sealed 25 18 1
No. of production lines unsealed 22 10 1
No. of production lines still sealed 3 10 10
Retail locations
No. of actions of pirated products 1 9 74
No. of pirated products seized 52 18,726 59,347
No. of actions of optical discs 147 91 51
No. of optical discs seized 127,836 268,608 57,492
- CDs 40,840 54,759 16,694
- VCDs 82,896 152,607 28,443
- DVDs 378 1,068 1,568
- CD-ROMs 3,596 38,174 453
- CD-R 0 0 4
- Games 126 9,780 133
- Karaoke 0 12,030 3,457
- VHS 0 0 4,487
- Video cassettes 0 190 2,253IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 65
INTELLECTUAL PROPERTY ENFORCEMENT ACTIONS (CONTINUED)
1998 1999 2000
(to 31 May)
BY MACAU MARINE AND CUSTOMS POLICE
No. of Proceedings 61 61 15
No. of optical discs seized 1,279,524 798,573 35,709
- Still seized 496,532 762,087 35,709
- Reverted to Territory 774,992 36,486 0
- Returned to owner 8,000 0 0
No. of moulds seized 0 18 0
- Returned to owner 10 10 0
- Reverted to Territory 0 1 0
No. of other equipment and parts seized 3 6 0
- Still seized 2 6 0
- Returned to owner 1 0 0
No. of stampers seized 81 0 0
- Still seized 80 0 0
- Reverted to Territory 1 0 0
BY MACAU POLICE FORCE
No. of optical discs seized 210,300 0 0
BY MACAU LEAL SENADO
No. of optical discs seized 468 0 0IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 66
PROCEEDINGS INSTITUTED
1998 1999 2000
(to 31 May)
NO. OF ADMINISTRATIVE PROCEEDINGS
INSTITUTED
Under Decree-Law no. 66/95/M 61 61 15
Fine Instituted
No. of Proceedings 44 25 1
Total (in patacas) $32,674,495 $1,554,688 $5,000
Fine already paid
No. of Proceedings 24 13 0
Total (in patacas) $470,481 $72,838 $0
Under Decree-Laws nos. 17/98/M and 51/99/M 76 67 14
- Production Locations 17 7 2
- Retail Locations 59 60 12
Fine Instituted
- No. of Proceedings 68 29 0
- Production Locations 14 3 0
Total (in patacas) $5,202,267 $3,560,779 $0
- Production Locations $960,000 $1,030,000 $0
- Retail Locations $4,242,267 $2,530,779 $0
Fine already paid
No. of Proceedings 21 3 0
- Production Locations 9 1 0
- Retail Locations 12 2 0
Total (in patacas) $790,470 $484,071 $0
- Production Locations $510,000 $415,000 $0
- Retail Locations $280,470 $69,071 $0IP/Q/MAC/1, IP/Q2/MAC/1,
IP/Q3/MAC/1, IP/Q4/MAC/1
Page 67
PROCEEDINGS INSTITUTED (CONTINUED)
1998 1999 2000
(to 31 May)
NO. OF CRIMINAL PROCEEDINGS
INSTITUTED
No. of Proceedings 94 87 108
Pirated discs
-Production Locations 15 12 0
- Retail Locations 78 66 44
Other pirated products 1 9 64
No. of Proceedings sent to  Public Prosecutor 92 77 24
Pirated discs
- Production Locations 15 10 0
- Retail Locations 76 65 21
Other pirated products 1 2 3
No. of Proceedings with sentence conducted 23 9 2
Pirated discs
- Production Locations 3 2 0
- Retail Locations 20 7 2
Other pirated products 0 0 0
__________