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: 1995-06-13
Institutions: European Commission
Subjects: United States, designs and models, electronic component, industrial property, legal person, natural person

COMMISSION  OF THE EUROPEAN  COMMUNITIES 

Brussels,  13.06.1995 
COM(95) 261 final 

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 

(presented  by the  Commission) 

Explanatory  memorandum 

Community and international lesal context 

Council  Directive 87/54/EEC  of  16 December  1986  on 
legal  protection  of 
topographies  of  semiconductor  products1  lays  down  the  basic  principles  which  the 
Member States  must  observe  for  the  protection  of  intellectual  property  in  these 
topographies,  d  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. 

the 

Under  the  terms  of the  Agreement  on  tlw  European  Economic  Area,  the  Directive  was 
extended  to  the  EFTA  countries  where  this  Agreement  was  in  force,  and  it  continues, 
accordingly,  to  form  part  of the  domestic  legal  order  of the  EFTA  countries  where  the 
Agreement is in force and which have not become members of the European Union.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 basis and in others on a temporary basis.3 

OJNoL24,  27.1.1987, p. 36. 
Article 65(2) and Annex XVII, point  1  of 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 
the  Community 
countries  and 
Member States; 

territories  which  have  granted 

like  protection 

to 

-  Council  Decision  94/373/EC  of  27  June  1994  (OJ  No  L  170,  5.7.1994,  p.  34)  on  the 
extension  of the legal  protcclion of  topographies of semiconductor  products to  persons  from 
the United States of America until  I July 1995; 

-  Council  Decision  94/700/EC  of  24  October  1994  (OJ  No L  284,  1.11.1994,  p.  61)  on  the 
extension  of the legal protection  of topographies  of semiconductor  products to persons  from 
Canada; 

-  Council  Decision 94/828/EC of  19 December  1994 (OJ No L 351, 31.12.1994, p.  12) on  the 
extension  of the legal  protection  of topographies  of semiconductor  products to persons  from 
certain territories. 

A 

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  who  do  not  benefit  from  the  protection  afforded  by  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  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,  entered 
into force  in the Community  on  1 January  1995.4  Countries of the  industrialized  world 
which are Parties to the Agreement establishing the World Trade Organization have one 
year  following  the  entry  into  force  of  this  Agreement  to  apply  its  provisions  on  trade-
related aspects of intellectual property  rights.5 

Council Decision of 22 December  1994 provides for the extension of the legal protection 
of topographies of semiconductor products to persons from a Member of the World Trade 
Organization  as from 1  January  1996.6  For his part, President Clinton announced  on 23 
March  1995 that  the  protection  afforded  under American  law had  been  extended  to  all 
Members of the World Trade Organization with effect  from the same date.7 

Council  Decision  94/800/EC  of 22 December  1994 concerning the  conclusion  on  behalf  of  the 
European Community, as regards matters within its competence, of the agreements reached  in the 
Uruguay Round multilateral negotiations (1986-1994), OJ No L 336,23.12.1994. 
Article 65 of the Agreement on trade-related aspects of intellectual property rights. 
OJ No L 349, 3112.1994, p. 201. 
Proclamation  6n%0  to  Implement  Certain  Provisions  of  Trade  Agreements  Resulting  From  the 
Uruguay Round of Multilateral Trade Negotiations, and for Other Purposes. 

2 

Relations between the Community and the United States of America 

Council Decision 94/373/EC8 was adopted  on 27 June  1994 in order to extend the interim 
protection  already  granted  by  the  Community  to  persons  from  the  United States  of 
America by the  .:• recessive Decisions  which  had  been  adopted  from  26  October  1987 to 
that  date.  Decision  94/373/EC extends, from  2 July  1994 to  1 July  1995, the  protection 
provided for pursuant  to Directive 87/54/EEC to natural persons who are nationals of the 
United States  of America or have their habitual residence in the territory  of that  country, 
and to  companies  and  other legal  persons  of the United States  of America  which  have a 
real and effective  industrial or commercial establishment in that country. 

In the United  States, the order  of 26 May  1994, adopted  in accordance with  Section 914 
of  the  1984  Semiconductor  Chip Protection  Act,9  extends  until  1 July  1995  the  interim 
orders granting the legal protection  provided for by this legislation to nationals, residents 
or sovereign  authorities of Member States of the European Community.  By Proclamation 
6780  of  23  March  1995,'°  and  in  accordance  with  Section  902(a)(2)  of  the  1984 
Semiconductor  Chip  Protection  Act,  President  Clinton  extended  the  protection  provided 
for in this legislation to the Member States of the European Community with effect  from 1 
July  1995."  As specified  above, the protection in question is also to be extended to all the 
Members of the World Trade Organization as from  1  January 1996.12 

Proposal 

In  view  of  the  extension,  by  virtue  of  the  Proclamation  of  the  President  of  the 
United States, of the full  and complete protection established by the  1984  Semiconductor 
Chip Protection Act to the Member States of the European  Community with  effect  from 
1 July  1995, it may be concluded that natural and legal persons from  these Member States 
will  continue  to  be  afforded  appropriate  protection  in  the  United States  of  America  in 
respect of topographies of semiconductor products. 

The extension  of protection  to persons from  the Member States of the Community  under 
the  Semiconductor  Chip  Protection  Act  is  conditional  on  reciprocal  protection  being 
provided by the Community for persons from the United States. 

The criterion of reciprocity, currently used to determine whether to extend protection, can 
in  future  no  longer  be  applied  because  of  the  Agreement  on  trade-related  aspects  of 
intellectual property rights. 

8 

9 

10 

II 

Aforementioned  Decision, footnote 3. 
Chapter 9 of Title  17, United States Code. 
Sec footnote 7. 
Point 3 of the Proclamation, first sentence. 
Point  3 of the Proclamation, second sentence. 

It  is  therefore  proposed  that  the  Council  extend  the  right  to  protection  under 
Directive 87/54/EEC to natural and legal persons from the United States of America with 
effect  from  2 July  1995 and  until  Decision  94/824/EC  applies,  i.e.  1 January  1996.  As 
from  that  da!.%  protection  in  accordance  with  the  requirements  of  the  aforementioned 
Agreement  vM  be provided  by the  United States  of  America  and  the  Member States  of 
the  European  Community  to  persons  from  all  the  Members  of  the  World  Trade 
Organization  in respect of topographies of semiconductor products. 

Measures to be taken in connection with 
the A2reement on the European Economic Area 

The  proposed  Council  Decision  relates,  as  stated  above,  to  a  matter  covered  by  the 
Agreement  on the European  Economic Area.  It  is aimed  at  implementing,  in respect  of 
persons from  the United States of America, the protective machinery already applied to a 
certain  number  of  countries,  reflected  by the  adoption  of  a  series  of  Council  Decisions 
already listed as binding acts in Annex XVII, point 3 of this Agreement.  Accordingly, the 
application  of  the  Decision  should  be  extended  to  the  EFTA  countries  in  which  the 
Agreement on the European Economic Area is in force and which are not members of the 
European Union. 

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

Proposai for a Council Decision 

of. 

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  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 that protection  has, since 7 November  1987, been extended to the United States 
of America  on the basis  of a series  of interim  Council  Decisions,2 the  latest  of which  is 
Decision 94/373/EC of 27 June 1994; 

Whereas that Decision applies until  1  July 1995; 

Whereas  the  United States  of  America  has  appropriate  legislation  on  the  protection  of 
topographies of semiconductor  products and the  President  of that  country  extended that 
protection  to  persons  from  the  Member States  of  the  European  Community  as  from 
1 July 1995 in his Proclamation of 23 March 1995; 

OJ No L 24, 27.1.1987, p. 36. 
Council  Decision 87/532/EEC of 26 October  1987, OJ No L 313, 4.11.1987, p. 22; Council 
Decision 90/511/EEC of 9 October  1990, OJ No L 285,  17.10.1990, p. 31; Council  Decision 
93/16/EEC of 21 December  1992, OJ No L  11,  19.1.1993, p. 20; Council  Decision 94/4/EC of 
20 December  1993, OJ No L 6,  8.1.1994,  p. 23; Council  Decision 94/373/EC of 27 June  1994, 
OJNoL170,  5.7.1994,  p. 34. 

Whereas  the  Agreement  ca  trade-related  aspects  of  intellectual  property  rights,  which 
forms  part  of  the  results  of  the  Uruguay  Round  of  multilateral  lade  negotiations 
embodied  in  the  Marrakesh  Final  Act  of  15  April  1994,  requires  Members  to  grant 
protection  to  ii.iegrated-ctrcuit  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  that  Agreement,  together  with  that  establishing  the  World  Trade  Organization 
(to which it is annexed), entered  into force  in the Community on  1 January  1995,  whereas 
the  developed  countries  which  are  Members  of  the  Agreement  establishing  the  World 
Trade  Organization  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 the  Community  has adopted  Council  Decision 94/824/EC  of  22 December  1994 
on  the  extension  of  the  legal  protection  of  topographies  of  semiconductor  products  to 
persons  from  a  Member  of  the  World  Trade  Organization,3  which  is  to  apply  from 
1 January  1996; whereas  the  United  States  of  America  is  a Member  of  the  World  Trade 
Organization; 

Whereas  in  view  of  the  extension  of  the  protection  provided  for  by  United  States 
legislation  to  persons  from  the  Member States  of  the  European  Community  the  right  to 
protection  under  Directive 87/54/EEC  should  be  extended  to  natural  and  legal  persons 
from  the  United  States  of  America  with  effect 
from  2  July  1995  and  until 
Decision 94/824/EC  applies, i.e.  1  January  1996, 

HAS ADOPTED THIS DECISION: 

Article 1 

Member States shall extend the right to protection 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  in 
the same way as nationals of a Member State; 

(b)  companies  or  other  legal  persons  from  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. 

OJ No L 349, 31.12.1994, p. 201. 

This Decision shall apply from 2 July 1995. 

Article 2 

Member Statec shall extend the right to legal protection under this Decision to the persons 
referred  to in Article  1  until 1  January 1996. 

Any  exclusive  rights  acquired  under  Decisions 87/532/EEC,  90/511/EEC,  93/16/EEC, 
94/4/EC,  94/373/EC  or under this Decision  shall continue to  produce their effect  for  the 
period laid down under Directive 87/54/EEC. 

This Decision is addressed to the Member States. 

Article 3 

Done at Brussels, 

For the Council 
The President 

ISSN 0254-1475 

COM(95) 261  final 

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