CELEX: 51994PC0574
Language: en
Date: 1994-12-07
Title: Proposal for a COUNCIL DECISION on the extension of the legal protection of topographies of semiconductor products to persons from certain territories

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)
 ---pagebreak---  ---pagebreak---                               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 EFTA 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 from certain territories (until 31.12.1994), and Council
             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);
         - 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.
 ---pagebreak---                                                  -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
to persons from territories which have a special link with the United Kingdom. In
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.
 ---pagebreak---                                                -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.
 ---pagebreak---  ---pagebreak---                                                 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.
 ---pagebreak---                                     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 oftopographiesof semiconductor products to personsfromcertain 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 personsfromthe 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 93/16/EEC of 21 December 1992,                        as  amended      by     Council
         Decision 93/520/EEC of 27 September 1993.
 ---pagebreak---                                           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,
 ---pagebreak--- 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.
                                           Article 2
This Decision shall apply from 1 January 1995.
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.
                                           Article 3
This Decision is addressed to the Member States.
Done at Brussels,
                                                                For the Council
                                                                  The President
 ---pagebreak---                                        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
 ---pagebreak---                                           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
Office for Official Publications of the European Communities
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