[Notes on Article 6, contd.]
IPIC/DC/3 page 44
Under
(d) Finally, paragraph (4) contains an alternative. Alternative E, it would be left to national law to decide whether the person in whose favor the exception was applied would be required to pay the holder of the right an equitable remuneration in respect of microchips imported, sold or otherwise distributed after notice of the infringing status of such microchips. Under Alternative F, Contracting Parties that applied the exception allowed in paragraph (4) would be required to ensure that the said person will pay the holder of the right an equitable remuneration in respect of microchips imported, sold or otherwise distributed after notice.
95. Ad paragraph (5): This paragraph corresponds to Article 5ter of the Paris Convention. It is a reasonable exception that should apply not only to patents (to which Article 5ter of the Paris Convention applies), but also to protected layout-designs. The wording of paragraph (5) makes it clear that the mandatory exception contained in the provision applies to microchips built into, rather than carried by, vehicles.
96. Ad paragraph (6): In conformity with the unanimous view expressed during the fourth session of the Committee of Experts, paragraph (6) allows Contracting Parties to provide for the "exhaustion of rights" in respect of protected layout-designs, or microchips incorporating such layout-designs, that have been put on the market by, or with the consent of, the holder of the right.
97. It follows from the drafting of the provision in paragraph (6) that Contracting Parties would be free to provide for national exhaustion (where rights are exhausted only when the first authorized sale occurs on the territory of the Contracting Party), regional exhaustion (where rights are exhausted when the first authorized sale occurs on the territory of a region to which the Contracting Party belongs), or international exhaustion (where rights are exhausted following a sale anywhere in the world).
98.
The suggestion made during the fourth session of the Committee of Experts that, as far as importation and subsequent sale or distribution are concerned, exhaustion should be made a mandatory rule under the Treaty (so that in each Contracting Party the proprietor could not prohibit "parallel importation"), has not been adopted.