Proposal for a COUNCIL DECISION on the extension of the legal protection of topographies of semiconductor products to persons from certain territories
Date: 1994-12-07
Institutions: European Commission
Subjects: Netherlands OCT, United Kingdom OCT, United States, electronic component, industrial property

COMMISSION OF THE EUROPEAN  COMMUNITIES 

COM(94) 574 final 
Brussels, 07.12.1994 

Proposal  for a 

COUNCIL DECISION 

on the extension of the legal protection of topographies 
of semiconductor products to persons from certain territories 

(presented by the Commission) 

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 for the protection of intellectual property  in the 
topographies of integrated circuit designs which must be respected  in all Member  States 
of the Community.  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 
on 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  has 
also applied since 1  January 1994 in the EFT A countries where that Agreement is in force, 
as a binding act forming part of those countries' domestic legal regimes." 2 

A  series  of  Council  decisions,  also  taken  over  in  the  Agreement  on  the  European 
Economic  Area  as  binding  acts,  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.  In some cases permanent  and  in others 
interim protection has been accorded on a reciprocal basis to natural and legal persons.3 

Directive of  16 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  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 that 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  Council 
territories 
Decision 94/373/EEC of 27 June 1994 (OJ No L 170, 5.7.1994,  p. 34), which extends until 
1 July  1995  the protection  in  respect  of  the  United  States of  America  (this  latest  Decision 
has not yet been taken over in the Agreement on the European Economic Area); 

31.12.1994), 

certain 

(until 

from 

and 

-  Council Decision 94/700/EC of 24 October (OJ n° L 284,  1.11.1994, p.61), on the extension 
of the legal protection of topographies oisemiconductor products to persons from  Canada. 

-2 

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. 

The  contracting  party  concerned  is  to  endeavour,  where  the  right  to  protection  for 
topographies of semiconductor products is extended to a non-contracting party, 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  as regards  integrated  circuits 
to which it refers. 

The Agreement, together with that establishing the World Trade Organization (to which it 
is annexed), will enter into force  on  1 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 Agreement on trade-related aspects of intellectual property  rights; 
the developing-country Members will be entitled to defer for a further period of four years 
the date of application of the provisions of the Agreement other than Articles 3, 4 and 5.5 

Relations  between  the  Community  and the territories  concerned 

Since 7 November  1987 the Community has, on the basis of a series of interim decisions,6 
granted  legal  protection  consistent  with the  principles  contained  in Directive  87/54/EEC 
In 
to  persons  from  territories  which  have  a  special  link  with  the  United Kingdom. 
accordance with the Council Decision currently in force (93/16/EEC), that protection lasts 
until 31 December  1994. 

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. 
Council  Decision  87/532/EEC  of  26  October  1987  on  the  extension  of  legal  protection  of 
topographies  of  semiconductor  products  in  respect  of  persons  from  certain  countries  and 
territories  (OJ  No L  313,  4.11.1987,  p. 22);  Second  Council  Decision  90/511/EEC  of 
9 October  1990  on  the  extension  of  the  legal  protection  of  topographies  of  semiconductor 
products  to  persons  from  certain  countries  and  territories  (OJ  No L 285,  17.10.1990,  p.  31); 
Council  Decision  93/16/EEC  of  21 December  1992 on  the extension  of  the legal protection  of 
topographies  of  semiconductor  products  to  persons  from  the  United  States  of  America  and 
certain territories (OJ No L  11,  19.1.1993, p. 20).  Annexed  to these Decisions are lists of the 
territories concerned. 

-3 

Council  Decision  93/520/EEC  of  27  September 19937  completed  the  list  of  territories 
protected  in accordance with Decision 93/16/EEC by adding to  it Aruba and Netherlands 
Antilles,  which  are  consequently  also  covered  by  the  system  applicable  until 
31 December  1994 to territories which have a special link with the United Kingdom. 

The  protection  provided  by  all  of these Decisions  is granted to  natural  persons  who  are 
nationals  of  one  of the  territories  concerned  or who  have  their  habitual  residence  there. 
On the other hand, companies or other legal persons in these territories which have a real 
and effective  industrial or commercial establishment there are eligible for protection only if 
the  Commission  establishes  that  companies  or  other  legal  persons  of  a  Member  State 
which  have  the  right  to  protection  under  Directive  87/54/EEC  benefit  from  protection 
there. 

At present, in all of the territories which have a special link with the United Kingdom and 
are  mentioned  in  Decision 93/16/EEC,  topographies  of  semiconductor  products  are 
protected  generally  under copyright  law8.  Persons from the  Community therefore  qualify 
for protection in all of these territories. 

In Netherlands Antilles protection for topographies of semiconductor products is provided 
by the Copyright Law of  17 December  1912,  as amended.  In Aruba the same law is  also 
applicable  until  such  time  as  it  is  repealed  or  amended  by  the  legislature.  It  provides 
protection for persons from the Community. 

The  above-mentioned  Decisions,  which  are  of  limited  duration,  were  based  on  the 
consideration  that  the  territories  which  did  not yet  have  specific  legislation  would  make 
such  provision  and  would  make  it  applicable  as  soon  as  possible  to  persons  from  the 
Member  States  of  the  Community  benefiting  from  the  right  to  protection  under 
Directive 87/54/EEC. 

OJNoL246,  2.10.1993, p. 31. 
It  must  be  noted  that  the  Isle  of Man  has adopted  specific  rules to  implement  the  principles 
contained  in  Directive  87/54/EEC  and  the  Council's  Decisions  taken  on  the  basis  of  that 
Directive  (The  Design  Right  (Semiconductor  Topographies)  Order of  14 December  1993  and 
the  Design  Right  (Semiconductor  Topographies)  Regulations  of  18 January 1994).  In  Hong 
Kong  a  regulation  dealing  specifically  with  semiconductor  products  has  just  been  adopted 
(Layout-Design (Topography) of Integrated Circuits Ordinance of 31 March 1994). According to 
the  information  received  by  the  Commission,  this  regime  of  protection  must  be  extended  to 
persons from the Community from the beginning of 1995. 

4-

As things stand, it is forseeable that the Agreement on trade-related aspects of intellectual 
property rights, including  Section 6,  which deals with topographies  of integrated circuits, 
will  be  applied  in  the  territories  concerned  within  the  prescribed  deadlines  mentioned 
above. 

It  should  be  stressed  that,  once  the  Agreement  on  trade-related  aspects  of  intellectual 
property rights enters into force,  it will  no longer be  possible to  apply the  current  system 
of  protection  in  the  Community,  which  is  based  on  a  reciprocity  requirement,  to  other 
Members of the Agreement. 

Proposal 

Given that the current legislation in the territories concerned is to remain in force,  thereby 
affording  persons from the Community protection for topographies,  it  is proposed  to  the 
Council  that,  from  1 January  1995,  these  territories  should  continue  to  benefit  from 
protection  under  Directive 87/54/EEC,  under  the  conditions  currently  applicable,  until 
31 December  1995. 

The Community reserves the right to reexamine the situation at that time, having regard to 
any developments in the legislation protecting topographies of semiconductor products in 
those territories. 

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

The Decision  which  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 
extending to persons from the territories mentioned in its Annex the protective  machinery 
already applied  to  them through the  adoption  of a number of  Council  Decisions9  already 
taken over as binding acts in point 3 of Annex XVII to that Agreement.  Accordingly,  the 
Decision should cover the EFTA countries in which the Agreement is in force. 

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

See footnotes  6 and 7. 

Proposal for a Council Decision 

of 

on the extension of the legal protection of topographies 
of semiconductor products to persons from certain territories 

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  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  the  Community  has,  since  7 November  1987,  extended  such  protection  on  the 
basis  of  a  series  of  interim  Council  Decisions  to  persons  from  certain  territories  the 
number of which was increased on  1  November  19932; 

Whereas  these  Decisions  were  based  on  the  consideration  that  the  territories  which  did 
not yet have specific  legislation would make such provision and would make it  applicable 
as soon as possible to persons from the Member States of the Community benefiting from 
the right to protection under Directive 87/54/EEC; 

Whereas the last of these Decisions3 applies until 31 December  1994; 

OJNoL24,27.1.1987, p. 36. 
Council Decision 87/532/EEC of 26 October 1987 on the extension of the legal protection of topographies 
of  semiconductor  products  in  respect  of  persons from certain  countries  and  territories  (OJ  No L 313, 
4.11.1987, p. 22);  Second Council Decision 90/511/EEC of 9 October 1990 on the extension of the legal 
protection of topographies of semiconductor products to persons from certain countries and territories (OJ 
No L 285, 17.10.1990, p. 31);  Council Decision 93/16/EEC of 21 December 1992 on the extension of the 
legal protection of topographies of semiconductor products to persons from the United States of America 
and certain territories (OJ No L  11,19.1.1993, p. 20), amended by Council Decision 93/520/EEC 
of 27 September  1993 (OJ No L 246, 2.10.1993, p. 31). 

Council  Decision 
Decision 93/520/EEC of 27 September 1993. 

93/16/EEC 

of 

21 December  1992, 

as 

amended 

by  Council 

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  15 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 (to 
which it is annexed),  will  enter  into force  on  1 January 1995  or as  soon  as possible  after 
that  date;  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 developing-country Members will be entitled to  defer 
for  a  further  period  of  four  years  the  date  of  application  of  the  provisions  of  that 
Agreement other than Articles 3, 4 and 5; 

Whereas  it  is  forseeable  that  the  Agreement  on  trade-related  aspects  of  intellectual 
property rights will be applied in the territories concerned within the prescribed deadlines; 

Whereas  the  provisions  guaranteeing  protection  in the  territories  concerned  for  persons 
from  the Community as regards topographies are still  in force in those territories; 

Whereas, with effect  from  1 January  1995  and until 31 December  1995, protection  should 
be extended under Directive 87/54/EEC to the territories concerned, 

HAS ADOPTED THIS DECISION. 

Article 1 

Member  States  shall extend the right to  protection under Directive 87/54/EEC to  natural 
persons  who  are  nationals  of  a  territory  listed  in  the  Annex  or  who  have  their  habitual 
residence in one of those territories. 

This extension  shall also apply to  companies or other legal  persons of a territory listed in 
the Annex  which  have  a real  and effective  industrial  or commercial  establishment  in that 
territory, subject to the condition that companies or other legal persons of a Member State 
which have a right to protection under Directive 87/54/EEC benefit from protection in the 
territory in question. 

The  territories  listed  in the  Annex  which  satisfy  the  conditions  laid  down  in  the  second 
subparagraph  shall  be  determined  by the Commission  and communicated  to  the  Member 
States. 

This Decision shall apply from 1 January 1995. 

Article 2 

The Member States shall extend the right to protection under this Decision to the persons 
referred to in Article  1 until 31 December  1995. 

Any exclusive rights acquired under Decisions  87/532/EEC,  90/511/EEC,  93/16/EEC,  as 
amended by Decision  93/520/EEC,  or under this Decision  shall continue to  produce their 
effects  for the period laid down under Directive 85/54/EEC. 

This Decision is addressed to the Member States. 

Article 3 

Done at Brussels, 

For the Council 
The President 

ANNEX 

Anguilla 
Aruba 
Bermuda 
British Indian Ocean Territory 
British Virgin Islands 
Cayman Islands 
Channel Islands 
Falkland Islands 
Hong Kong 
Isle of Man 
Montserrat 
Netherlands Antilles 
Pitcairn 
St Helena 
St Helena Dependencies (Ascension, Tristan da Cunha) 
South Georgia and the South Sandwich Islands 
Turks and Caicos Islands 

3 

ISSN 0254-1475 

COM (94) 574 final 

DOCUMENTS 

EN 

06  08 

Catalogue number : CB-CO-94-598-EN-C 

ISBN 92-77-83289-4 

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