COMMISSION OF THE EUROPEAN COMMUNITIES 
COM(94) 382 final 
Brussels, 15.09.1994 
Proposal for a 
COUNCIL DECISION 
on the extension of the legal protection of topographies 
of semiconductor products to persons from Canada 
(presented by the Commission) 
A 
EXPLANATORY MEMORANDUM 
Community and international legal context 
Council Directive 87/54/EEC on the legal protection of topographies of semiconductor 
products1 lays down the basic principles which must be respected in all Member States of 
the Community for the protection of intellectual property in the topographies of 
integrated circuit designs . It provides that protection is to be available to natural persons 
who are nationals of or have their habitual residence in a Member State and to companies 
or other legal persons which have a real and effective industrial or commercial 
establishment in the territory of a Member State. The Directive has been implemented 
into the national legislation of all the Member States. 
Under the terms of the Agreement on the European Economic Area, the Directive has 
also applied, since 1 st January 1994, in the EFTA countries which are contracting parties 
to that Agreement, as a binding act forming part of those countries' domestic legislation.2 
A series of Council decisions, also taken over as binding acts in the Agreement on the 
European Economic Area, has extended the legal protection of topographies of 
semiconductor products introduced by Directive 87/54/EEC to persons from certain 
countries and territories outside the Community. This protection has been granted on the 
basis of reciprocity to natural and legal persons,3 in some cases on a permanent and in 
others on a temporary basis. 
Directive of 16th December 1986 (OJ No L 24, 27.1.1987, p. 36). 
Article 65(2) and point 1 of Annex XVII to the Agreement on the European Economic Area. 
Currently in force: 
Council Decision 90/510/EEC of 9th October 1990 (OJNo L 285, 17.10.1990, p. 29), 
as amended by Decision 93/17/EEC of 21st December 1992 (OJNo L 11, 19.1.1993, 
p. 22), which introduces a system of permanent and unconditional protection in 
respect of certain countries and territories that have granted like protection to the 
Community Member States; 
Council Decision 93/16/EEC of 21st December 1992 (OJ No L 11, 19.1.1993, p. 20), 
as amended by Decision 93/520/EEC of 27th September 1993 (OJ No L 246, 
2.10.1993, p. 31), which grants interim protection to persons from the United Slates of 
America (until 31.12.1993) and from certain territories (until 31.12.1994), and 
Council Decision 94/373/EC of 27th June 1994 (OJNoL170, 5.7.1994, p. 34), 
which extends until 1st July 1995 the protection in respect of the United Sta+:^ of 
America (this latest Decision has not yet been taken over in the Agreement or. i!^e 
European Economic Area). 
As provided for in Article 4(1) and (2) of Protocol 28 to the Agreement on the 
European Economic Area, the contracting parties to the Agreement have the right to take 
decisions on the extension of the legal protection of topographies of semiconductor 
products to persons from any third country or territory, which is not a contracting party to 
the Agreement, where such persons do not benefit from the right to protection under the 
Agreement. They may also conclude agreements to this effect. 
Where the right to protection for topographies of semiconductor products is extended to a 
non-contracting party, the contracting party concerned shall endeavour to ensure that the 
non-contracting party concerned will grant the right to protection to the other contracting 
parties to the Agreement on equivalent conditions to those granted to the contracting 
party concerned. 
In addition, the Agreement on trade-related aspects of intellectual property rights, which 
forms part of the results of the Uruguay Round of multilateral trade negotiations 
embodied in the Marrakesh Final Act of 15th April 1994, requires Member States to 
grant protection to topographies of integrated circuits in accordance with the provisions 
of that Agreement and those of the Treaty on Intellectual Property in Respect of 
Integrated Circuits to which it refers. The Agreement, together with that establishing the 
World Trade Organization, will enter into force on 1st January 1995 or as soon as 
possible after that date;4 the developed countries which are Members of the Agreement 
establishing the World Trade Organization will have one year following the entry into 
force of that Agreement in which to implement the provisions of the Agreement on 
trade-related aspects of intellectual property rights.5 
Relations between the Community and Canada 
The Canadian regulations governing integrated circuit topographies are contained in the 
following texts: 
an Act to provide for the protection of integrated circuit topographies and to 
amend certain Acts in consequence thereof, which was passed on 27th June 1990, 
entered into force on 1st May 1993 and was amended by the Act of 6th 
May 1993 to amend the Copyright Act, the Industrial Designs Act, the Integrated 
Circuit Topographies Act, the Patents Act, the Trade-Marks Act and other Acts in 
consequence thereof (amendment of Article 4(1 )(c) of the Act, which specifies the 
persons to whom protection is to be granted); 
the Integrated Circuit Topographies Regulations, which was passed on 27th 
April 1993 and entered into force on 1st May 1993. 
On 27th May 1993 Canada also issued an Order listing the countries to which it grants 
reciprocal protection under the Act, namely Australia, the United States of America and 
Japan. 
Article XIV of the Agreement establishing the World Trade Organization and point 3 of the 
Final Act embodying the results of the Uruguay Round of multilateral trade negotiations. 
Article 65 of the Agreement on trade-related aspects of intellectual property rights. 
3 
A detailed examination of the above-mentioned Canadian regulations has shown that 
they afford suitable protection to topography designers who are Canadian nationals or are 
natural or legal persons that have a real and effective establishment there for the purpose 
of designing topographies or manufacturing integrated circuits. 
In a letter dated 16th September 1993, the Canadian authorities stated that they were 
keen to take the steps necessary to grant in Canada, in accordance with the terms of the 
above-mentioned regulations, the right to permanent protection of topographies of 
semiconductor products to persons from the Community Member States, subject to 
reciprocity. Such protection would be enjoyed by designers who, either at the time of 
design or of submission of the application for registration of the topography concerned, 
were Community nationals or natural or legal persons having a real and effective 
establishment in the Community for the purpose of designing topographies or 
manufacturing integrated circuits.6 
At several meetings with the Commission, the Canadian authorities have confirmed that 
they wish to extend the protection of topographies on the terms described above and have 
indicated the date on which such protection would take effect. 
Proposal 
The Canadian authorities have announced that they plan to extend from 1st 
November 1994 the arrangements for the legal protection of topographies introduced by 
Canadian regulations to Community nationals and to natural or legal persons that have a 
real and effective establishment there for the purpose of designing topographies or 
manufacturing integrated circuits. 
Given that those regulations grant suitable protection to designers of topographies, their 
extension to the above-mentioned persons should be reciprocated by the Community in 
respect of persons from Canada. 
Under the terms of the Agreement on trade-related aspects of intellectual property rights, 
it will not be possible to continue to extend such protection on the current basis of 
reciprocity, as is currently the case. 
Accordingly, it is proposed that the Council should extend, from 1st November 1994 
until the implementation of the Agreement on trade related aspects of intellectual 
property rights, the right to protection under Directive 87/54/EEC to persons from 
Canada. 
Since the Canadian authorities plan to grant the protection provided for by their 
regulations not only to designers who are natural persons (Community nationals and 
natural persons who have a real and effective establishment there for the purpose of 
designing topographies or manufacturing integrated circuits) but also to legal persons 
(which likewise have such an establishment in the Community), it is proposed that the 
Article 4(1 )(c) cf the Law of 27th June 1990, as amended by the Law of 6ih May 1993. 
4 
Council should extend the right to protection under Directive 87/54/EEC both to natural 
persons and to companies and other legal persons from Canada. 
Measures to be taken in connection with the Agreement on the European Economic Area 
The Decision v/hich the Council is recommended to adopt relates, as stated above, to a 
matter covered by the Agreement on the European Economic Area and is aimed at 
applying to persons from Canada the protection machinery applied to certain other 
countries through the adoption of a series of Council decisions already taken over as 
binding acts in point 3 of Annex XVII to that Agreement. Accordingly, the Decision 
should cover the EFTA countries which are party to the Agreement on the European 
Economic Area. 
In accordance with Article 4(2) of Protocol 28 to the Agreement, the Community will 
also endeavour to ensure that the Canadian authorities grant the right to protection to the 
other contracting parties to the Agreement on equivalent conditions to those granted to it. 
5 
Proposal for a 
COUNCIL DECISION 
on the extension of the legal protection of topographies of 
semiconductor products to persons from Canada 
THE COUNCIL OF THE EUROPEAN UNION, 
Having regard to the Treaty establishing the European Community, 
Having regard to Council Directive 87/54/EEC of 16th December 1986 on the legal 
protection of topographies of semiconductor products,1 and in particular Article 3(7) 
thereof, 
Having regard to the proposal from the Commission, 
Whereas the right to legal protection of topographies of semiconductor products in the 
Community applies to persons qualifying for protection under Article 3(1) to (5) of 
Directive 87/54/EEC; 
Whereas this right can be extended by Council Decision to persons who do not benefit 
from protection under the said provisions; 
Whereas the extension of the protection in question should, as far as possible, be decided 
by the Community as a whole; 
Whereas in some cases on a permanent and in others on an interim basis, protection has 
previously been granted on a reciprocal basis to persons from certain countries and 
territories outside the Community;2 
Whereas Canada has regulations according suitable protection to designers of 
topographies and has announced that it plans to extend their application, from 1st 
November 1994, to Community nationals and to natural and legal persons that have a 
real and effective establishment there for the purpose of designing topographies or 
manufacturing integrated circuits; 
OJ No L 24, 27.1.1987, p. 36. 
Currently in force: 
Council Decision 90/5107EEC of 9th October 1990, as amended by Decision 
93/17/EEC of 21st December 1992, which introduces a system of permanent and 
unconditional protection in respect of certain countries and territories which have 
granted like protection to the Community Member States; 
Council Decision 93/16/EEC of 21st December 1992, as amended by Decision 
93/520/EEC of 27th September 1993, which grants interim protection to persons 
from the United States of America (until 31.12.1993) and from certain territories 
(until 31.12.1994), and Council Decision 94/373/EC of 27th June 1994, which 
extends until 1st July 1995 the protection in respect, of the United States of America. 
6 
Whereas the Agreement on trade related aspects of intellectual property rights, which 
forms part of the results of the Uruguay Round of multilateral trade negotiations 
embodied in the Marrakesh Final Act of 15th April 1994, requires Members to grant 
protection to integrated-circuit topographies in compliance with its own provisions and 
with those of the Treaty on intellectual Property in Respect of Integrated Circuits to 
which it refers; 
Whereas the Agreement, together with that establishing the World Trade Organization, 
will enter into force on 1st January 1995 or as soon as possible after that date and 
whereas the developed countries which are Members of the Agreement establishing the 
World Trade Organization will have one year following the entry into force of that 
Agreement in which to implement the Agreement on trade related aspects of intellectual 
property rights; 
Whereas, in view of the undertakings given by the Canadian authorities, the right to 
protection under Directive 87/54/EEC should be extended, from 1st November 1994 
until the implementation of the above-mentioned Agreement on trade related aspects of 
intellectual property rights, to natural persons, companies and other legal persons from 
Canada, 
HAS ADOPTED THIS DECISION: 
Article 1 
Member States shall extend the legal protection provided for pursuant to 
Directive 87/54/EEC as follows: 
(a) natural persons who are nationals of Canada or who have their habitual residence 
in tie territory of Canada shall be treated as if they were nationals of a 
Member State; 
(b) companies and other legal persons of Canada which have a real and effective 
industrial or commercial establishment in that country shall be treated as if they 
half a real and effective industrial or commercial establishment in the territory of a 
Member State. 
Article 2 
This Decision shall apply from 1st November 1994. 
Member States shall extend protection under this Decision to the persons from Canada 
referred to in Article 1 until the implementation of the Agreement on trade-related 
aspects of intellectual property rights, embodied in the Marrakesh Final Act of 15th 
April 1994. 
Article 3 
This Decision is addressed to the Member States. 
Done at Brussels, 
For the Council 
The President 
ISSN 0254-1475 
COM(94) 382 final 
DOCUMENTS 
EN 11 02 08 
Catalogue number : CB-CO-94-401-EN-C 
ISBN 92-77-80513-7 
Office for Official Publications of the European Communities 
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