Proposal for a COUNCIL DECISION on the extension of the legal protection of topographies of semiconductor products to persons from Canada
Date: 1994-09-15
Institutions: European Commission
Subjects: Canada, designs and models, electronic component, intellectual property, legal person, natural person

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 
industrial  or  commercial 
or  other  legal  persons  which  have  a  real  and  effective 
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 
topographies  of 
the 
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. 

legal  protection  of 

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 
topographies  or 
manufacturing  integrated  circuits.6 

the  purpose  of  designing 

in  the  Community  for 

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 

from  1st 
The  Canadian  authorities  have  announced 
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. 

to  extend 

they  plan 

that 

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 

shall  extend 
Member  States 
Directive 87/54/EEC as follows: 

the 

legal  protection  provided 

for  pursuant 

to 

(a) 

(b) 

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; 

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. 

This Decision shall apply from  1st  November 1994. 

Article 2 

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. 

This Decision is addressed to the Member States. 

Article 3 

Done at Brussels, 

For the Council 
The President 

ISSN 0254-1475 

COM(94) 382 final 

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