[Notes on Article 6 contd.]
IPIC/DC/3 page 34
75.
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Related to the question discussed in the three preceding paragraphs is the issue of creating an exception in favor of the "bona fide acquirer." This issue has, more logically, now been placed wholly in paragraph (5) of Article (6), which deals with exceptions to the minimum protection required by paragraph (1) of Article 6.
76. Ad paragraph (2): Subparagraph (a) obliges Contracting Parties to make an exception to the provisions of items (i) and (ii) of paragraph (1). According to the exception, the authorization of the holder of the right would not be required for performing any act, otherwise to be prohibited under items (i) and (ii) of paragraph (1), where the act is performed for private or non-commercial use or solely for the purpose of evaluation, analysis
[, research] or teaching. These are activities which should remain free in all Contracting Parties; in fact, this exception corresponds to common practice.
77.
An alternative is given in subparagraph (a) as to whether to include express reference to the legitimacy of performing an act mentioned in items (i) and (ii) of paragraph (1) for "research," or whether such a reference is implicit in the words "evaluation" and "analysis.'
78. Subparagraph (b) establishes an exception to the rights of the holder of the right in respect of the practice of so-called "reverse engineering." This is the case where a person other than the holder of the right not only evaluates and analyzes a protected layout-design, but in addition creates a new layout-design (which may contain the whole or part of the protected layout-design). This exception is granted only where the new layout-design complies with the requirement of originality laid down in Article 3(2). Therefore, if the layout-design created on the basis of evaluation and analysis is not original in the sense elaborated in Article 3(2), the reproduction of the protected layout-design for the purposes of reverse engineering and the incorporation of such a layout-design in a microchip, and any distribution for commercial purposes of such a layout-design or of a microchip in which the layout-design is incorporated, would not be permitted. It is to be noted that the exception in favor of "reverse engineering" limits the protection conferred to layout-designs of integrated circuits to a large extent. However, such a provision is considered to be justified in order to encourage the improvement of existing layout-designs. It is also to be noted that the "reverse engineer" does not have to pay any remuneration to the holder of the right, for that same reason. This is an important difference between protection of layout-designs and protection of inventions because the inventor of an invention which depends on an existing invention requires the authorization of the owner of the existing invention or, where a compulsory license is available in favor of the owner of the dependent invention, at least has to pay a license fee.
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