[Notes on Article 6, contd.]
IPIC/DC/3 page 32
71.
Item (iii) of paragraph (1) requires Contracting Parties to consider unlawful the act of "importing, selling or otherwise distributing" a protected layout-design or a microchip in which a protected layout-design is incorporated. It is to be noted, however, that these activities require the authorization of the holder of the right only if they are carried out for "commercial purposes." This means, for example, that a person who imports a watch containing a microchip that incorporates, without the authorization of the holder of the right, a protected layout-design does not require the authorization of the holder of the right if the said person intends to use the watch himself or to give it as a gift to a third person (as opposed to selling it).
Disagreement has existed throughout the previous meetings on the draft Treaty on the question whether the draft Treaty should require Contracting Parties to prohibit the importation, sale or other distribution of articles containing a microchip that incorporates a protected layout-design (examples of such articles being computers, automobiles, radio and television receivers, watches and cameras). Those views expressed against the inclusion of such a requirement have suggested that the requirement would give to the draft Treaty a trade-regulation character, and would extend the ambit of the Treaty beyond the concerns of intellectual property. They have similarly voiced concern over the effect which such a requirement might have on enterprises in the country of importation that rely on an external source of microchips, as well as over the difficulty of detecting infringing microchips on the part of a purchasing enterprise in the country of importation.
73.
The opposing view has emphasized that the prohibition of the importation, sale or other distribution of articles containing microchips that incorporate a protected layout-design would correspond to standard practice in intellectual property, recognized in the majority of countries, as evidenced by Article 5ter of the Paris Convention, which exempts from infringement the use of devices forming the subject of a patent in the machinery or accessories of vessels, aircraft or land vehicles, in temporary or accidental passage, and which thereby recognizes that importation of an article containing a patented invention would otherwise constitute infringement. According to this view also, if the importation, sale or other distribution of an article containing a microchip that incorporates a protected layout-design were not prohibited, the protection accorded to layout-designs would be useless, since the destination of a layout-design is incorporation in a microchip that can perform a function in another article. Furthermore, it is argued that principle and detection are two different matters, and that problems of detection are not unique to intellectual property rights in layout-designs, but pervade the whole area of intellectual property, as evidenced, for example, in the unauthorized use of process inventions in the patent field.
74. The new wording of item (iii) makes it clear that the emphasis of the draft Treaty is on intellectual property, and not the regulation of trade, by requiring Contracting Parties to consider unlawful the unauthorized act of importing, selling, or otherwise distributing microchips in which a protected layout-design is incorporated, "irrespective of whether the microchip is imported, sold or otherwise distributed as part of some other article or separately." At the same time, it prefers the view that adequate protection would not exist if Contracting Parties were not required to consider unlawful the unauthorized importation, sale or other distribution of microchips that incorporate a protected layout-design and that are contained in another article.