Proposal for a COUNCIL DECISION on the extension of the legal protection of topographies of semiconductor products to persons from the United States of America
Date: 1994-06-08
Institutions: European Commission
Subjects: United States, designs and models, electronic component, industrial property, legal person, natural person

COMMISSION  OF  THE  EUROPEAN  COMVUJNITIES 

C0M(94) 244 final 

Brussels, 08.06.1994 

Proposal  for a 

COUNCIL  DECISION 

on the extension of the legal protection of topographies 
of semiconductor products to persons from the United States of America 

VïÔ 

(presented  by  the Commission) 

-1-

Proposal for a Council Decision 
on the extension of the legal protection of topographies 
of semiconductor products to persons from the United States of America 

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 the Members States must respect for the 
protection  of  intellectual  property  in  these  topographies  .  The  Directive  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 in the legislation of all the Member States. 

Under the terms of the  Agreement  on the  European  Economic  Area the  Directive  also 
applies,  since  1 January 1994,  in the  EFTA  countries  which  are  Contracting Parties  to 
that  Agreement,  as  a  binding  act  forming  part  of  the  internal  legal  system  of  those 
countries.2 

A  series of Council Decisions,  also taken over as binding  acts in the Agreement on the 
European Economic Area  already  mentioned,  have  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,  in  some  cases  on  a 
permanent, and in others on a temporary basis3. 

As  provided  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,  who  do  not benefit from the  protection  afforded  by the Agreement. 
They may also conclude agreements to this effect. 

1  Directive of  16 December  1986 (OJ No L 24,27.1.1987, p. 36). 
2  Article 65(2) and Annex XVII point  1  of the Agreement on the European Economic Area. 
3  Currently in force : 

-  Council  Decision 90/510/EEC of 9 October  1990 (OJ No L 285,  17.10.1990, p. 29), as amended by 
Decision  93/17/EEC  of  21  December  1992  (OJ  No  L  11,  19.1.1993,  p.  22),  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 21 December  1992 (OJ No L  11,  19.1.1993, p. 20), as amended by 
Decision  93/520/EEC of 27 September  1993 (OJ No L 246, 2.10.1993, p. 31), 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  94/4/EC  of  20  December  1993  (OJ  No  L  6, 
8.1.1994,  p.  23),  which  extends  until  1.7.1994  the  protection  in  respect  of  the  United  States  of 
America. 

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Where the right to protection for topographies of semiconductor products is extended to a 
non-Contracting Party, the Contracting Party concerned must endeavour to ensure that the 
non-Contracting Party  concerned  will  grant  the  right  to  protection  to  the  other 
Contracting Parties to the Agreement under 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  15 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.  This  Agreement,  together  with  that  establishing  the 
World Trade Organization, will enter into force on  1  January  1995 or as soon as possible 
after that date;4  the industrialized world will have one year following  the entry into  force 
of  the  Agreement  establishing  the  World Trade Organization  in  which  to  apply  the 
provisions of the Agreement on trade-related aspects of intellectual property rights.5 

Relations between the Community and the United States of America 

Council  Decision 94/4/EC  was  adopted  on  20 December  1993  in  order  to  extend  the 
interim  protection  already  granted  by the  Community  to persons from the  United  States 
of America by the successive Decisions which had been adopted from 26 October  1987 to 
that date.  It thus granted, for the period  1  January to  1  July  1994, the protection accorded 
by  Directive 87/54/EEC  to  natural  persons  who  are  nationals  of  the  United States  of 
America  or  who  have  their  habitual  residence  there  and  applies  the  principle  of  such 
protection being granted, subject  to reciprocity, to companies or other legal persons from 
the United States which have a real and effective  industrial  or commercial  establishment 
there.  The  recognition  that  companies  and  other  legal  persons  from  the  Member States, 
entitled to protection under Directive 87/54/EEC, do enjoy protection in the United States 
was provided by Commission Decision 94/142/EC of 25 February  19946. 

In  the  United States  America,  by  virtue  of  a  temporary  order  promulgated  on 
5 November  1992  in  accordance  with  Section 914  of  the  1984  Semiconductor  Chip 
Protection  Act,  legal  protection  has  been  granted  until  1  July  1994  to  owners  of 
topographies  of  semiconductor  products  who  are  nationals,  residents  or  sovereign 
authorities of Community Member States. 

By virtue of points (c) and  (c) of  Section 914 of  the Semiconductor  Chip  Protection  Act 
already  mentioned,  the  mechanism  for  provisional  protection - applied  by  means  of 
temporary  orders - will  come  to  an  end  on  1  July  1995  and  no  orders  can  take  effect 
beyond that date unless, as has already been done in that regard, the Semiconductor  Chip 
Protection Act is amended.7 

Given the likely  application  by that  date, or soon thereafter,  of the Agreement  on trade-
related aspects of intellectual  property  rights already mentioned, the US authorities  have 
announced  that  they  plan  to  continue  to  use  the  mechanism  of  temporary  orders  until 
1 July  1995  and  to  forego  applying - for  such  a  short  period - the  system  of  permanent 
protection  foreseen  in  Section 902 of the  Semiconductor  Chip Protection  Act  in relation 
to third countries, which requires a Presidential  Proclamation. 

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. 
Commission  Decision of 25 February  1994 in accordance with Council Decision 94/4/EC determining 
the United States of America as a country to the companies or other legal persons of which  legal 
protection of topographies of semiconductor products is extended (OJ No L 61, 4.3.1994, p. 30). 
Amendment effected  by the Semiconductor  International  Protection  Extension  Act of  1991 (Public 
Law  102-64), dated 28 June  1991. 

Proposal 

Taking  account  of  the  intention  indicated  by  the  US  authorities  to  extend,  until 
1 July  1995 the protection currently accorded to owners of topographies of semiconductor 
products  who  are  nationals,  residents  or  sovereign  authorities  of  Community 
Member States  by  means  of  a  temporary  order  based  on  Section 914  of  the  1984 
Semiconductor  Chip  Protection  Act,  it  is  proposed  that  the  Council  continues  to  grant 
protection  under  Directive 87/54/EEC 
the  United States  until 
1 July  1995,  pending  implementation  of  the  Agreement  on  trade-related  aspects  of 
intellectual property rights. 

to  persons  from 

In this connection, it is also proposed that the Council : 

-  note  that  the  Commission  has,  since  26 October  1990,8  repeatedly  determined  that 
companies  and  other  legal  persons  from  the  Member States,  entitled  to  protection 
under  Directive 87/54/EEC,  enjoy  protection  in  the  United States,  as  well  as  the 
intention  of  the  US  authorities  to  extend  the  period  of  that  protection  until 
1 July 1995; 

- 

extend, accordingly, the right to protection  under Directive 87/54/EEC  to  companies 
and  other  legal  persons  from  the  United States  which  have  a  real  and  effective 
industrial  or  commercial  establishment  there,  without  that  protection  being  made 
conditional on a fresh determination of reciprocity by the Commission. 

Measures to be taken in connection with the Agreement on the European Economic Area 

Given that the Decision which it is suggested the Council adopts relates, as stated above, 
to  a matter  covered  by the  Agreement  on the  European Economic Area  and  is aimed  at 
extending until  1  July  1995 the mechanism of protection introduced  for persons from the 
United States  by  a  number  of  Council  Decisions  already  taken  over  as  binding  acts  in 
point 3  of  Annex XVII  to  that  Agreement,  the  application  of  this  Decision  should  be 
extended to the EFTA countries which are party to the Agreement. 

In  addition,  in  accordance  with  Article 4(2)  of  Protocol 28  to  the  Agreement,  the 
Community  will  endeavour  to  ensure  that  the  United States  will  grant  the  right  to 
protection to the other Contracting Parties to the Agreement  under equivalent  conditions 
to those granted to it. 

Commission  Decisions 90/541/EEC of 26 October  1990 (OJ No L 307, 7.11.1990, p. 21), 93/217/EEC 
of  19 March  1993 (OJ No L 94, 20.4.1993, p. 30) and 94/142/EC of 25 February  1994 (OJ No L 61, 
4.3.1994, p. 30). 

i 

PROPOSAL for a 
COUNCIL DECISION 
on the extension of the legal protection of topographies of 
semiconductor products to persons from the United States of America 

THE COUNCIL OF THE EUROPEAN UNION, 

Having regard to the Treaty establishing the European Community, 

Having  regard  to  Council  Directive 87/54/EEC  of  16 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 the legal protection of topographies of semiconductor products in the 
Community applies to persons qualifying  for protection under Article 3 paragraphs (1) to 
(5) of Directive 87/54/EEC; 

Whereas this right can be extended, by a 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 
upon for the Community as a whole; 

Whereas  such  protection  has  been  extended  to  the  United States  of  America  since 
7 November  1987  by  successive  Council  Decisions  taken  on  an  interim  basis2,  the  last 
being Decision 94/4/EC of 20 December 1993; 

Whereas that Council Decision is applicable until  1  July 1994; 

Whereas  protection  has  been  extended  to  companies  and  other  legal  persons  from  the 
United States  since  26 October  1990,  the  Commission  having  repeatedly  determined 
since  that  date  that  the  United States  fulfils  the  condition  of  reciprocity  laid  down  in 
Article  1  paragraph (2) of the Council Decisions extending protection to it3; 

Whereas 
Decision 94/142/EC of 25 February  1994, applicable until  1  July  1994; 

last  Commission  Decision  making 

the 

such  a  determination 

is 

Whereas  the  United States  has  appropriate  legislation  and  is  expected  to  continue  to 
protect  topographies  of  semiconductor  products  under  its  national  law  and  make  this 
protection  available  to  natural  persons,  companies  and  other  legal  persons  from  the 
Member States  of  the  Community  benefitting  from  the  right  to  protection  under 
Directive 87/54/EEC; 

1  OJ No L 24, 27.1.1987, p. 36. 
2  Council Decisions 87/532/EEC of 26 October  1987 (OJ No L 313, 4.11.1987, p. 22), 90/511/EEC of 9 
October  1990 (OJ No L 285, 17.10.1990, p. 31), 93/16/EEC of 21 December  1992 (OJNo L  11, 
19.1.1993, p. 20), 94/4/EC of 20 December  1993 (OJ No L 6, 8.1.1994, p. 23). 

3  Commission  Decisions 90/541/EEC of 26 October  1990 (OJ No L 307, 7.11.1990, p. 21), 93/217/EEC 
of  19 March  1993 (OJ No L 94, 20.4.1993, p. 30), 94/142/EC of 25 February  1994 (OJ No L 61, 
4.3.1994, p. 30). 

s 

Whereas all Member States of the European Community have adopted national measures 
implementing Directive 87/54/EEC; 

Whereas  it  is  appropriate  to  continue  to  extend  the  protection  in  question  to  the 
United States of  America  to  1 July  1995, pending  implementation  of  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 
15 April 1994, 

HAS ADOPTED THIS DECISION: 

Article 1 

Member  States shall extend the legal protection provided for under Directive 87/54/EEC 
as follows: 

(a)  natural persons who are nationals of the United States of America or who have their 
habitual residence in the territory of the United States of America shall be treated as 
if they were nationals of a Member State; 

(b)  companies  and  other  legal  persons  of  the  United States  of  America  which  have  a 
real  and  effective  industrial  or  commercial  establishment  in  that  country  shall  be 
treated as if they had a real and effective  industrial or commercial  establishment  in 
the territory of a Member State. 

This Decision shall apply from 2 July 1994. 

Article 2 

Member States  shall  extend  protection  under  this  Decision  to  the persons  referred  to  in 
Article  1  until  1  July 1995. 

Any  exclusive  rights  acquired  under  Decisions 87/532/EEC,  90/511/EEC,  93/16/EEC, 
94/4/EC or this Decision shall continue to produce their effect  for the period laid down by 
Directive 87/54/EEC. 

This Decision is addressed to the Member States. 

Article 3 

Done at Brussels, 

For the Council 
The President 

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COM(94) 244 final 

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