[Notes on Article 6, contd.]
IPIC/DC/3 page 42
90.
Ad paragraph (4): Differing views were expressed during the fourth session of the Committee of Experts concerning the nature and content of an exception allowable in favor of a bona fide acquirer of microchips in which a protected layout-design is incorporated.
91.
Some delegations favored making the exception mandatory. This approach has not been adopted in paragraph (4), which remains an optional exception to liability that may be adopted by Contracting Parties.
92. The proposal, favored by a number of delegations during the fourth session of the Committee of Experts, of dealing with the situation of the bona fide acquirer in one provision (as opposed to the two provisions on the situation that were contained in the previous version of the draft Treaty), has, as mentioned above, been adopted in paragraph (4).
93.
Paragraph (4) uses to a large extent, while at the same time containing more extensive provisions, the proposal of the Delegation of India during the fourth session of the Committee of Experts, which advocated that the corresponding provision to paragraph (4) should read as follows:
94.
"No Contracting State shall consider unlawful the importing, selling or otherwise distributing, for commercial purposes, of microchips in which the protected layout-design is incorporated, where and as long as the person performing or ordering such acts did not know, or had no reasonable grounds to know, that the reproduction or incorporating was done without the authorization of the holder, provided that such microchips were acquired by him before he was given actual notice by the proprietor."
The text of paragraph (4) has the following four main features:
(a) First, paragraph (4) allows, and does not require, Contracting Parties to create an exception in favor of the bona fide acquirer.
(b) Secondly, in consequence of the approach adopted in item (iii) of paragraph (1) of Article 6 to the question of articles containing microchips that incorporate protected layout-designs (see paragraphs 72 to 74, above), the exception allowed in paragraph (4) may be applied whether the microchip that is innocently acquired is imported, sold or otherwise distributed independently or as part of some other article.
(c) Thirdly, the use of the notion "bona fide" has been removed from the text of the draft Treaty. In its place, the principle guiding the possible application of the exception is lack of knowledge, or lack of reasonable grounds for such knowledge, at the time of acquiring a microchip or an article containing a microchip, that the microchip incorporates a protected layout-design without the authorization of the holder of the right in the protected layout-design ("where the person performing or ordering such acts did not know or had no reasonable ground to know, when acquiring such microchip or such article, that the reproducing of the protected layout-design
(topography) or its incorporation had been done without the authorization of, the holder of the right").