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FTAA - Free Trade Area of the Americas

Draft Agreement

Chapter on Intellectual Property Rights


(Continuation)


[Article XX. Conditions on Patent Applicants

1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.

2. Members may require an applicant for a patent to provide information concerning the applicant's corresponding foreign applications and grants.]

[Article XX. Conditions on Patent Applicants

Each Party shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. In addition, each Party may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.

Each Party may require an applicant for a patent to provide information concerning the applicant's corresponding foreign applications and grants. ]

[Article XX. Exceptions to Rights Conferred

Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties. ]

[Article XX. Exceptions

Each Party may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.]

[Article XX. Exceptions

1. The rights conferred by the patent may only be enforced against acts performed by third parties for industrial and commercial purposes. In particular, such rights may not be enforced against acts performed exclusively in private and for non-commercial purposes, or for experiment, scientific research or teaching related to the object of the patented invention. The rights conferred by the patent may not be enforced against any person who markets, acquires or uses the patented product or a product obtained by the patented process, after this product has been lawfully introduced into national or international commerce by the owner of the patent or by his or her licensees.

The patent does not confer the right to prevent the acts mentioned in Article 5 of the Paris Convention on the protection of industrial property.

2.The rights conferred by a patent may not be enforced against a person who can prove that, prior to the date of application or, if appropriate, the date of priority of the application for the corresponding patent, he or she was already producing the product, or using the procedure that constitutes the invention in the country. That person shall have the right to continue producing the product and using the procedure as he or she had been doing, but this right may only be transferred or assigned together with the establishment or enterprise in which such production or use was being made.

This exception shall not apply if the person acquired knowledge of the invention by unfair means. ]

[Article XX. Limitations and exceptions to rights conferred]

1. Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

2. Members may stipulate in laws that the rights conferred on patent holders shall not prevent unauthorized third parties from making, in necessary and sufficient quantity, the patented product or the product produced using the patented procedure and to perform all the other acts necessary for the purposes of approving the marketing of products. Marketing thereof shall be done following the expiry of the patent.]

[Article XX. Conferred Rights Exceptions

The Members may provide some limited exceptions to the exclusive rights granted by a patent, on condition that they do not infringe unjustifiably on the normal exploitation of the patent nor cause an unjustified prejudice against the legitimate interests of the patent holder, but consider the legitimate interests of third parties. ]

[Article XX. Exhaustion of Rights

1. This Agreement shall not affect the right of States Parties to determine the conditions, where appropriate, under which exhaustion of rights shall operate with regard to any products placed legitimately on the market by the patent holder or with the authorization of the patent holder.

2. Members undertake to review their domestic laws within a maximum period of 5 years from entry into force of this Agreement. counted from the entry into force of this Agreement with a view to adopting at least the principle of regional exhaustion vis a vis all countries signatories to this Agreement.]

[ Article XX. Exhaustion of the right

A patent shall not confer on its owner the right to proceed against a third party making commercial use of a product protected by the patent once that product has been introduced into the commerce of any country by the owner or another person authorized by, or with economic ties to the owner of the patent.

For the purposes of the preceding paragraph, two persons shall be deemed to have economic ties when one of the persons is able to exercise a decisive influence on the other, either directly or indirectly, with respect to the exploitation of the patent, or when a third party is able to exert such influence over both persons. 

Where the patent protects biological material capable of reproduction, the patent coverage shall not extend to the biological material that is obtained by means of the reproduction, multiplication, or propagation of material that was introduced into commerce, as described in the first paragraph, provided that it was necessary to reproduce, multiply, or propagate the material in order to fulfill the purposes for which it was introduced into commerce, and that the material so obtained is not used for multiplication or propagation purposes. ]

[Article XX. Other Use Without Authorization of the Right Holder

Article 31 of the TRIPs Agreement shall apply , mutatis mutandis, to use without the right holder’s authorization. ]

[Article XX. Other Use Without consent of the Right Holder

When the law of a Party allows for other use of the subject matter of a patent, different from those permitted under the previous article, without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:

a) authorization of such use shall be considered on its individual merits;

b) Such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Party in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly;

c) The scope and duration of such use shall be limited to the purpose for which it was authorized;

d) such use shall be non-exclusive;

e) such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use;

f)
any such use shall be authorized predominantly for the supply of the domestic market of the Party authorizing such use;

g) authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur. The competent authority shall have the authority to review, upon motivated request, the continued existence of these circumstances;

h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;

i) the legal validity of any decision relating to the authorization of such use shall be subject to judicial review or other independent review by a distinct higher authority;

j) any decision relating to the remuneration provided in respect of such use shall be subject to judicial review or other independent review by a distinct higher authority;

k) The Parties shall not be obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive. The need to correct anti-competitive practices may be taken into account in determining the amount of remuneration in such cases. Competent authorities shall have the authority to refuse termination of authorization if and when the conditions which led to such authorization are likely to recur; and

l) where such use is authorized to permit the exploitation of a patent (“the second patent”) which cannot be exploited without infringing another patent (“the first patent”), the following additional conditions shall apply:


i) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;

ii) the owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent; and

iii) the use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent. ]

[Article XX. Other Use Without Authorization of the Right Holder]

1. [Members shall have the right to determine the grounds or reasons for authorizing use, by third parties without the authorization of the right holder, that are different from the limitations and exceptions established in this chapter.]

2. Where the law of a Member allows for other use of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:


a) authorization of such use shall be considered on its individual merits;

b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. 
In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly;

c) the scope and duration of such use shall be limited to the purpose for which it was authorized, and in the case of semi-conductor technology shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive;

d) such use shall be non-exclusive;

e) such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use;

f) any such use shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use;

g) authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur. The competent authority shall have the authority to review, upon motivated request, the continued existence of these circumstances;

h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;

i) the legal validity of any decision relating to the authorization of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member;

j) any decision relating to the remuneration provided in respect of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member; 

k)
Members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive. The need o correct anti-competitive practices may be taken into account in determining the amount of remuneration in such cases. Competent authorities shall have the authority to refuse termination of authorization if and when the conditions which led to such authorization are likely to recur;

l) where such use is authorized to permit the exploitation of a patent ("the second patent") which cannot be exploited without infringing another patent ("the first patent"), the following additional conditions shall apply:

i) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;

ii) the owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent; and 

iii) the use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.
3. Each Member shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which may result from the exercise of the exclusive right to conferred by the patent , for example, failure to work.]

4. [A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non-exclusive and shall not be transferable, even in the form of the grant of a sub-license, except with that part of the enterprise or goodwill which exploits such license.]

[ Article XX: Other Uses without the Consent of the Right Holder

When the national legislation of a Party authorizes other uses10 of the patent product without the consent of the copyright holder, including the use by government or third parties authorized by government, the following provisions shall be respected:


a) Authorization for said uses shall be considered according to their particular circumstances; 

b) Those uses will be permitted only when, before granting them, the potential user attempted to receive the copyright holder’s authorization to use those rights under reasonable commercial terms and conditions, and those attempts did not have the desired effect in a reasonable period of time. The Parties may be exempted from this commitment in cases of national emergency or other circumstances of extreme urgency, or for non-commercial public use. However, in situations of national emergency or other circumstances of extreme urgency, the copyright holder shall be informed of this fact as soon as is reasonably possible. In the case of non-commercial public use, when the government or contractor, without undertaking a patent search, knows or has demonstrable reasons to believe that a valid patent is or will be used by or for a government, the copyright holder shall be informed without delay.

c) The scope and duration of the uses shall be limited to the purposes for which they were authorized and in the case of semi-conductor technology, they can only be used for non-commercial public use or to correct a practice declared to be contrary to competition due to an administrative or legal procedure;

d) The uses will be of a non-exclusive nature; 

e) The uses shall only be ceded with that part of the enterprise or its intangible assets that benefit from them; 

f) These uses shall be authorized mainly to supply the domestic market of the Party granting such uses; 

g) The authorization for said uses may be withdrawn on condition that the legitimate interests of the persons who have received the authorization for those uses are adequately protected, if the circumstances leading to this situation have disappeared and are not likely to reoccur. The competent authorities shall be authorized to examine if those circumstances still exist, if a previous justified request has been made; 

h) The copyright holder shall receive appropriate remuneration, according to the individual circumstances of each specific case, bearing in mind the economic value of the authorization; 

i) The legal validity of any decision relative to the authorization of these uses shall be subject to legal review or another independent review by a different higher authority from the same Party; 

j) Any decision referring to the established remuneration for those uses shall be subject to legal review or another independent review by a different higher authority from the same Party; 

k) The Parties shall not be obliged to apply the conditions set out in sections b) and f), when authorization has been granted for those uses to remedy a practice which, due to a legal or administrative procedure, has been found to be anti-competitive. The need to correct the anti-competitive practices may be considered when determining the amount of remuneration for those cases. The competent authorities shall have the power to refuse revocation of the authorization, if it is probable that the conditions, which gave rise to that situation, might reoccur; 

l) When the authorization for those uses has been granted to allow the exploitation of a patent (“second patent”) that cannot be exploited without infringing upon another patent (“first patent”), the following additional conditions must be followed:

i) The invention claimed in the second patent assumes that an important technical development of considerable economic value has been made in comparison to the invention claimed in the first patent; 

ii) The holder of the first patent shall have the right to a crossover license with adequate conditions to exploit the claimed invention of the second patent; and 

iii) The authorized use for the first patent may not be transferred without the surrender of the second patent. ]
[ Article XX. Other uses without consent of the right holder

1. On expiration of a three-year period following a patent grant, or four years following the application for a patent, whichever is longer, the competent national office may grant a compulsory license mainly for the industrial manufacture of the product covered by the patent, or for full use of the patented process, at the request of any interested party, but only if, at the time of the request, the patent had not been exploited in the manner specified in Articles 59 and 60, in the Party in which the license is sought, or if the exploitation of the invention had been suspended for more than one year.

2. Compulsory licenses shall not be granted if patent owners are able to give valid reasons for their failure to act, which may be reasons of force majeure or an act of God, in accordance with the domestic provisions in effect in each Party.

3. A compulsory license shall be granted only if, prior to applying for it, the proposed user has made efforts to obtain a contractual license from the patent holder on reasonable commercial terms and conditions and that such efforts were not successful within a reasonable period of time

4. Following the declaration by a Party of the existence of public interest, emergency, or national security considerations, and only for so long as those considerations exist, the patent may be subject to compulsory licensing at any time. In that case, the competent national office shall grant the licenses that are applied for. The owner of the patent so licensed shall be notified as soon as is reasonably possible.

5. Parties shall specify the scope or extent of the compulsory license and, in particular, the term for which it is granted, the subject matter of the license, and the amount of remuneration and the conditions for its payment.

6. The grant of a compulsory license for reasons of public interest shall not reduce the right of the patent owner to continue exploiting it.

7.Parties shall refuse termination of a compulsory license if and when the conditions that led to the granting of the license are likely to recur.

8. Parties shall grant a license, upon request by the owner of a patent whose exploitation necessarily requires the use of another patent, and that right holder has been unable to secure a contractual license to the other patent on reasonable commercial terms. That license shall subject to the following conditions:


a) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;

b) the owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent; and,

c) the license authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.

9. The provisions of this article shall be applied to cases covered by Title XIII of the present agreement. ]

[Article XX. Revocation/Forfeiture

An opportunity of judicial review shall be available to any decision to revoke or forfeit a patent. ]

[Article XX. Revocation or forfeiture

An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available.. Each Party may revoke or cancel a patent when grounds exist that would have justified refusal to grant it. ]

[Article XX. Term of protection

The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date. ]

[Article XX. Duration of protection

The term of protection conferred by a patent shall not end before the expiration of a period of twenty years counted from the filing date.]

[ Article XX. Duration of the patent on an invention

Patents shall be understood to be granted for a period of twenty (20) years, non-renewable, counted from the date the corresponding application was filed. ]

[Article XX. Process Patents: Burden of Proof

1. In the case of an infringement of the rights of the owner, if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:


a) if the product obtained by the patented process is new; 

b) if there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.
2. Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in subparagraph (b) is fulfilled.

3. In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account. ]

[Article XX. Burden of proof in patented processes.

When the subject matter of a patent is a process for obtaining an identical product, the judicial authorities shall be empowered to order the defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, each Party shall provide, at least in the following cases, that the burden of proof shall rest with the defendant to prove that the product subject to the alleged infringement was made otherwise than by the patented process:


a) if the product obtained by the patented process is new;

b) if there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.

Parties shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in subparagraph b) is fulfilled.

In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account. ]

[Article XX. Procedural issues]

1. Each Member shall establish a system for patenting inventions, which shall include at least:


a) measures to ensure that applications in process and annexes thereto are treated confidentially until they are published;

b) publication of the patent application no later than 18 months after the filing date or, where appropriate, of the earliest priority;

c) the option to request that patents granted in breach of the rules in force be declared null and void or be cancelled.;

d) the option to submit comments on behalf of third parties.

2. Members shall require the applicant for a patent to disclose the invention in a sufficiently clear and complete manner that persons skilled in the relevant art may work the invention. 

3. Members shall require the applicant to indicate the best way of working the invention known to the inventor on the date the application is filed, or if a priority is being claimed, on the priority date claimed in the application.

4. Members may require the applicant for a patent to provide information on his applications, searches and the corresponding patents granted abroad, as well as they may authorize filing by third parties of documents that may assist in the examination.

5. Members shall respect the principle of first to file, especially in the case of the right of priority stipulated in Article 4 of the Paris Convention (1967). Once the requirements for patentability have been met, the patent shall be granted to the first applicant whose filing has produced effects under the Paris Convention (1967).

6. The examination as to substance conducted by the Patent Offices of each Member State, shall determine whether the application fully satisfies the requirements for patentability in each State.]

[ Article XX. Procedural Issues

Parties shall ensure that procedures for the granting of patents are sufficiently clear, and respect the principles of due process. ]


[ Article XX. Conditions Imposed on Patent Applicants

1. The Parties shall request from the patent applicant that he disclose in a sufficiently clear and complete manner the invention so that persons trained in that technical field may carry out the invention and may demand that the applicant explain the best possible way to carry out the invention that the inventor knows of on the date of application or, if the date of priority is claimed, then on the date of priority claimed in the application.

2. The Parties may demand of the patent applicant that he provide information pertinent to his applications and the corresponding patent grants abroad. ]

[ Article XX: Patent Procedures: Burden of Proof

1. For the purposes of civil proceedings concerning the infringement of the copyright holder’s rights referred to in article XX (Conferred Rights) paragraph 1 b), the judicial authorities shall have the power to order the defendant to prove that the procedure to manufacture a product is different to the patented procedure when the purpose of a patent is a procedure to manufacture a product. Therefore, the Parties shall define that, except when there is proof to the contrary, any identical product manufactured by a party, without the consent of the patent holder, was produced by using the patented procedure, in at least one of the following circumstances:

a) If the product manufactured by this patented procedure is new; 

b) If there is a substantial probability that the identical product was manufactured by the same procedure and that the patent holder cannot establish through reasonable efforts the procedure that was in actual fact used.
2. The Parties shall have the freedom to decide that the burden of proof mentioned in paragraph 1 would fall upon the alleged violator, if the condition stipulated in section a) is fulfilled or if the condition stipulated in section b) is fulfilled.

3. When proof to the contrary is submitted, the legitimate interests of the defendants will be taken into account when considering the protection of their industrial and trade secrets. ]
Continuation: [Article XX. Patents

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10 The words “other uses” refer to uses different to those authorized by the preceding article.



 
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