TNAG-1927-FCO40-2744-Future-of-Hong-Kong-Sino-British-Joint-Liaison-Group-sub-gro-1989 — Page 173

[Notes on Article 6, contd.]

IPIC/DC/3 page 36

79.

Ad subparagraph (3)(a): This subparagraph deals with the question of non-voluntary licenses and similar measures, which has been, throughout the discussions in the previous meetings on the draft Treaty, an area of disagreement among the delegations.

80. Many proposals have been made in previous meetings on the way of dealing with the question of non-voluntary licenses, ranging from the prohibition of such licenses altogether to their allowance on general grounds that might be considered to be generous to the interests of competitors of the holder of the right in a layout-design.

81.

In the fourth session of the Committee of Experts, no delegation proposed that there should be a provision prohibiting non-voluntary licenses.

82.

During the fourth session of the Committee of Experts, two main proposals on non-voluntary licenses were presented. The first main proposal was by the Delegation of Bulgaria, which proposed that the corresponding provision to paragraph (3) of Article 6 should read as follows:

83.

"In order to prevent abuse which might result from the exercise of the exclusive right provided for in paragraph (1), or to preserve public interests, any Contracting State may provide for non-voluntary licenses and other measures, subject to the payment, by the beneficiary of a non-voluntary license, of an equitable remuneration to the proprietor." (Document IPIC/CE/IV/9)

The second main proposal was presented by the Delegation of the United States of America, which proposed that the corresponding provision to paragraph (3) of Article 6 should read as follows:

"[Non-Voluntary Licenses] No Contracting State may, in its national law, provide for non-voluntary licenses or other measures which would restrict or terminate, before the end of the term of protection, the exclusive right provided for in paragraph (1), except that a non-voluntary license may be given to address, only during its existence, a declared national health or public safety emergency, or to remedy an adjudicated violation of antitrust laws, or to allow use non-exclusively by a government for governmental purposes, and provided that, in the case of a license to address a national emergency or for use by a government, the owner of the rights to the layout-design must receive compensation commensurate with the market value of the license. A non-voluntary license must be non-exclusive. All decisions to grant non-voluntary licenses as well as the compensation to be paid shall be subject to judicial review under national law.

"A license to a government for use for governmental purposes shall be applicable only in the Contracting State where it is issued, and shall include only the right to make or have made microchips and/or industrial articles including such microchips for governmental consumption; and shall not include the right to import, license or sublicense, either by a government or any agency thereof, including any government-run or contracted industry, or to make or have made microchips or industrial articles containing such microchips for export or sale on the open market." (Document IPIC/CE/IV/10)