CELEX: 51982PC0769
Language: en
Date: 1982-11-18
Title: Proposal for a COUNCIL DECISION on common action by Member States within the framework of the diplomatic conference for the revision of the Paris Convention (submitted to the Council by the Commission)

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DOCUMENTS "COM"
COM (82) 769
Vol. 1982/0231
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 ---pagebreak--- COMMISSION OF THE EUROPEAN COMMUNITIES
                                           COM(82)769    final
                                           Brussels / 18 November 1982
                           Proposal for a
                          COUNCIL DECISION
    on common action by Member States within the framework of
        the diplomatic conference for the revision of the
                          Paris Convention
           ( submitted to the Council by the Commission )
                                              /$/              r " 't"
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 ---pagebreak---                                                          C.CM 7/.^
                      Proposal for a Council Decision         •   f *= -3
                   on -the Revision of the Paris Convention
                 for the Protection of Industrial Property
1 . This draft Decision relates to the current negotiations for revising
the Paris Convention for the Protection of Industrial Property, The
negotiations are taking place in a Diplomatic Conference, of which three
sessions have been, or are being, held:
              Geneva, February/March , 1980
              Nairobi, September/October, 1981
              Geneva, 4th - 29th October and 23rd - 27th November, 1982
2 . The extension of the third session (on 23rd – 27th November ) was agreed
upon in Geneva in order to resolve the problem of Article 5A of the Paris
Convention, governing the sanctions which may be applied by countries of
the Paris Union in cases where patents are not exploited or are insufficiently
exploited. To meet the developing countries * wishes , it had been provisionally
agreed in Nairobi , by all industrialised countries except the USA, that one
such sanction should be the "exclusive , nonj-voluntary licence". However,
since the second session of the Diplomatic Conference in Nairobi , EEC and
US industrial interests expressed their objections to the "exclusivity"
of the sanction} and the US government (with the support of the Community
and of other industrialised countries ) undertook to conduct informal
negotiations to see whether a modification of the "Nairobi text " could be
agreed ,
3 . During the last two working days in Geneva in October, 1982 , the Diplomatic
Conference was informed that such an agreement had been reached and a te.-^j
prepared in which "exclusivity" had been dropped and – another improvement -
the occasions specified on which sanctions might be used. The main advantage
of the new text is that it abandons the clause whereby developing countries
would be allowed to provide for non-voluntary licenses under a patent to be
exclusive , thus depriving the inventor not only of the monopoly rights
conferred by the patent , but also of the right to exploit his own invention :
this clause was the main cause of opposition by the United F + vtes and
Italian delegations to the text resulting from the second session . At a
Community meeting in Geneva on Friday, 29th October, the Commissi on representative
recommended acceptance of the text ; and nine Member States' representatives
agreed. The representatives of Italy disagreed. All other industrialised
countries were prepared to accept the text . In order to allow the countries
of the Paris Union time to study the text , the Diplomatic Conference was
adjourned until 23rd November : its meeting that week will be exclusively
concerned with that text .
 ---pagebreak--- 4 . There are four principal reasons for supporting "the new "text :
     (a ) it meets the principal objection raised by EEC industries to
           the "Nairobi text"}
     (b ) it represents a remarkable turn-round in the thinking of
           the developing countries ;
     ( c ) it is supported by the United States and could therefore be
           the basis of a genuine consensus in the Conference ; and
     ( d ) it may not commend itself to a later session of the Conference
           if there   is a change in the leadership of the Group of 77 •
5 . The Italian Government is unwilling to agree to the new text unless
other amendments are made to Articles 5A and 5 quater . These amendments
may not be unreasonable in themselves ; but there is not the slightest chance
that the Italian Government , even if supported by other Member States , will
squeeze more from the developing countries than the United States , with
considerable skill and energy, have succeeded in doing in Geneva, Indeed,
the amendments sought by the Italian Government are almost certain to
undermine the informal agreement negotiated by the United States . The
informal agreement requires a consensus within the Conference ; consensus
within the Conference presupposes a consensus among the industrialised
countries ; and one of the prerequisite of consensus among the industrialised
countries is common action by Member States of the Community.
6 . There is already a Council Decision , dated 29th January, 1980, requiring
common action in this field; and there are two directives in accordance
with the Council Decision, one dated 20th February, 1980, the other dated
 16th October, 1981 , applying the Decision to the negotiations on Article 5A.
 The present draft Decision, though consistent with the earlier decisions ,
 is specially framed to deal with the position which has arisen in the third
 session of the Diplomatic Conference .
 ---pagebreak---                         Proposal for a
                        COUNCIL DECISION
              on common action by Member States
      within the framework of the diplomatic conference
          for the revision of the Paris Convention
THE COUNCIL OF - THE EUROPEAN COMMUNITIES ,
Having regard to the Treaty establishing the European Economic
Community, and in particular Article 116 thereof,
Having regard to the proposal from the Commission ,
Having regard to the Council Decision of 29   January 1980,
 ---pagebreak--- Whereas a Diplomatic Conference is revising the Paris Convention
for the Protection of Industrial Property;
Whereas the revision of the Paris Convention includes matters of
particular interest to the common market ;
Whereas it could have damaging consequences for the common market
and for the Community if Member States adopted different views at
the Diplomatic Conference ;
Whereas the Third Session of the Diplomatic Conference is being
 extended from 23   to 27 . November 1982 , for the purpose of
resolving problems encountered in connection with Articles 5A and
 5 quater of the Paris Convention ;
 Whereas it is necessary for the successful resolution of these
 problems for Member States to support a text for the two articles
 in question set out in the annex to the Decision;
 Whereas this Decision does not prejudice the Community 's existing
 powers .
 HAS DECIDED AS FOLLOWS :
 ---pagebreak---                         Sole Article
The implementation of common action by Member States , in accordance
with the Council Decision of 29 January 1960, shall , as regards
Articles 5A and 5 quater of the Paris Convention for the Protection
of Industrial Property, be in accordance with the Directive annexed
hereto •
                              Done at Brussels ,
                                      For the Council
                                       The President
 ---pagebreak---                                                                AMEX
Directive
The delegations of Member States taking part in the Diplomatic Conference
on the revision of the Paris Convention signify their agreement ]
( a ) to support the revised texts of Article 5A, paragraph 8, and of Article
      5 qiater , set out below ;
(b ) to reaffirm their earlier agreement to include a Community clause in
      future bilateral agreements between EEC Countries and developing
      countries ; and
( c ) to withdraw any reservations on, or proposals for amending, other
      paragraphs of Article 5 A.
                                      ARTICLE 5A
( 8 ) Notwithstanding anything contained in paragraphs ( 3 ) and (4 ) t developing
      countries have the right to apply the following provisions :
       (a) /Same as in document PR/DC/37 » Annex II, as amended in the meetings
            of Main Committee I of October 23 . 1981 ( see document PR/SM/5 ,
            pages 88 to 94 )/
      ( b ) Any developing country has the right to provide in its national law
            that the patent may be forfeited or may be revoked where the patented
            invention is not worked, or is not sufficiently worked, in the country
            before the expiration of five years from the grant of the patent in
            that country, provided that the national law of the country provides
            for a system of non-voluntary licenses applicable to that patent and
            that , in the opinion of the national authorities competent for
            forfeiture or revocation , at the time of the decision concerning
            forfeiture or revocation , the grant of a non-voluntary license would
            not be possible because there is "-no applicant for a non-voluntary
            license who could ensure sufficient working, or that the beneficiary
            of a norif-voluntary license , if one was granted before the decision
            concerning forfeiture or revocation , did not , in fact , ensure
            sufficient working, unless the owner of the patent proves circumstances
            which in the judgement of the national authorities competent for
            forfeiture or revocation justify the non-working or insufficient
            working of the patented invention .
 ---pagebreak---                                 - 2 -
                           ARTICLE 5 QUATER
( 1 ) /Same as present text of Article 5 gnat er7
(2)   Any developing country has the right not to apply the provisions
      of paragraph ( 1 ).
 ---pagebreak--- The present text of Article 5 quater ( Patents t Importation of products
manufactured by a process patented in the importing country ) reads as
follows :
"When a product is imported into a country of the Union where there
exists a patent protecting a process of manufacture of the said
product , the patentee shall have all the rights , with regard to the
imported product , that are accorded to him by the legislation of
the country of importation , on the basis of the process patent , with
respect to products manufactured in that country ."
Le texte actuel de l'article 5 quater (Brevets : introduction de
produits fabriqués en application d' un procédé breveté dans le pays
d' importation ) se lit comme suit :
" Lorsqu'un produit est introduit dans un pays de 1 'Union où il existe
un brevet protégeant un procédé de fabrication dudit produit , le
breveté aura, à l' égard du produit introduit , tous les droits que la
législation du pays d' importation lui accorde , sur la base du brevet
de procédé, à l'égard des produits fabriqués dans le pays même »