CHAPTER 20

INTELLECTUAL PROPERTY RIGHTS

Section A: General Provisions

Article 20.A.1:  Definitions

  1. For the purposes of this Chapter:

Berne Convention means the Berne Convention for the Protection of Literary and Artistic Works, as revised at Paris, July 24, 1971;

Brussels Convention means the Convention Relating to the Distribution of Programme-Carrying

Signals Transmitted by Satellite, done at Brussels on May 21, 1974;

Budapest Treaty means the Budapest Treaty on the International Recognition of the Deposit of

Microorganisms for the Purposes of Patent Procedure (1977), as amended on September 26, 1980;

Declaration on TRIPS and Public Health means the Declaration on the TRIPS Agreement and

Public Health (WT/MIN(01)/DEC/2), adopted on November 14, 2001;

geographical indication means an indication that identifies a good as originating in the territory of a Party, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin;

Hague Agreement means the Geneva Act of the Hague Agreement Concerning the International

Registration of Industrial Designs, done at Geneva, July 2, 1999;

intellectual property refers to all categories of intellectual property that are the subject of Sections

1 through 7 of Part II of the TRIPS Agreement;

Madrid  Protocol  means  the  Protocol  Relating  to  the  Madrid  Agreement  Concerning  the

International Registration of Marks, done at Madrid, June 27, 1989;

Paris Convention means the Paris Convention for the Protection of Industrial Property, as revised at Stockholm, July 14, 1967;

PLT means the Patent Law Treaty adopted by the WIPO Diplomatic Conference on June 1, 2000;

performance means a performance fixed in a phonogram unless otherwise specified;

with respect to copyright and related rights, the term right to authorize or prohibit refers to exclusive rights;

Singapore Treaty means the Singapore Treaty on the Law of Trademarks, done at Singapore, March 27, 2006;

UPOV 1991 means the International Convention for the Protection of New Varieties of Plants, as revised at Geneva, March 19, 1991;

WCT means the WIPO Copyright Treaty, done at Geneva, December 20, 1996;

WIPO means the World Intellectual Property Organization;

for greater certainty, work includes a cinematographic work, photographic work and computer program; and

WPPT means the WIPO Performances and Phonograms Treaty, done at Geneva, December 20,

1996.

  1. For the purposes of Article 20.A.8 (National Treatment), Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.H.6 (Related Rights):

a national means, in respect of the relevant right, a person of a Party that would meet the criteria for eligibility for protection provided for in the agreements listed in Article 20.A.7 (International Agreements) or the TRIPS Agreement.

Article 20.A.2:  Objectives

The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

Article 20.A.3:  Principles

  1. A Party may,  in  formulating  or  amending  its  laws  and  regulations,  adopt  measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Chapter.
  1. Appropriate measures, provided that they are consistent with the provisions of this Chapter, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Article 20.A.4:  Understandings in Respect of this Chapter

Having regard to the underlying public policy objectives of national systems, the Parties recognize the need to:

(a)       promote innovation and creativity;

(b)       facilitate the diffusion of information, knowledge, technology, culture and the arts;

and

(c)       foster competition and open and efficient markets;

through their respective intellectual property systems, while respecting the principles of transparency and due process, and taking into account the interests of relevant stakeholders, including right holders, service providers, users and the public.

Article 20.A.5:  Nature and Scope of Obligations

Each Party shall provide in its territory to the nationals of another Party adequate and effective protection and enforcement of intellectual property rights, while ensuring that measures to enforce intellectual property rights do not themselves become barriers to legitimate trade.

A Party may, but shall not be obliged to, provide more extensive protection for, or enforcement of, intellectual property rights under its law than is required by this Chapter, provided that such protection or enforcement does not contravene this Chapter. Each Party shall be free to determine the appropriate method of implementing the provisions of this Chapter within its own legal system and practice.

Article 20.A.6:  Understandings Regarding Certain Public Health Measures

  1. The Parties affirm their commitment to the Declaration on TRIPS and Public Health. In particular, the Parties have reached the following understandings regarding this Chapter:

(a)       The obligations of this Chapter do not and should not prevent a Party from taking measures to protect public health. Accordingly, while reiterating their commitment to this Chapter, the Parties affirm that this Chapter can and should be interpreted and implemented in a manner supportive of each Party’s right to protect public health and, in particular, to promote access to medicines for all. Each Party has the right to determine what constitutes a national emergency or other circumstances of extreme urgency, it being understood that public health crises, including those relating to HIV/AIDS, tuberculosis, malaria and other epidemics, can represent a national emergency or other circumstances of extreme urgency.

(b)       In recognition of the commitment to access to medicines that are supplied in accordance with the Decision of the WTO General Council of August 30, 2003 on the Implementation of Paragraph Six of the Doha Declaration on the TRIPS Agreement and Public Health (WT/L/540) and the WTO General Council Chairman’s Statement Accompanying the Decision (JOB(03)/177, WT/GC/M/82), as well as the Decision of the WTO General Council of December 6, 2005 on the Amendment of the TRIPS Agreement, (WT/L/641) and the WTO General Council Chairperson’s  Statement Accompanying  the  Decision  (JOB(05)/319  and  Corr.

1,WT/GC/M/100) (collectively, the “TRIPS/health solution”), this Chapter does not and should not prevent the effective utilization of the TRIPS/health solution.

(c)       With respect to the aforementioned matters, if any waiver of any provision of the TRIPS Agreement, or any amendment of the TRIPS Agreement, enters into force with respect to the Parties, and a Party’s application of a measure in conformity with that waiver or amendment is contrary to the obligations of this Chapter, the Parties shall immediately consult in order to adapt this Chapter as appropriate in the light of the waiver or amendment.

Article 20.A.7:  International Agreements

  1. Each Party affirms that it has ratified or acceded to the following agreements: (a) Patent Cooperation Treaty, as amended September 28, 1979;

(b)       Paris Convention; (c)       Berne Convention; (e)       WCT; and

(f)        WPPT.

  1. Each Party shall ratify or accede to each of the following agreements, if it is not already a party to that agreement, by the date of entry into force of this Agreement:

(a)       Madrid Protocol; (b)       Budapest Treaty; (c)       Singapore Treaty;1

1  A Party may satisfy the obligations in paragraph 2(a) and 2(c) by ratifying or acceding to either the Madrid Protocol or the Singapore Treaty.

(d)       UPOV 1991;

(e)       Hague Agreement; and

(f)        Brussels Convention.

  1. The Parties shall give due consideration to ratifying or acceding to the Patent Law Treaty, done at Geneva June 1, 2000; or, in the alternative, shall adopt or maintain procedural standards consistent with the objective of the Patent Law Treaty.

Article 20.A.8:  National Treatment

  1. In respect of all categories of intellectual property covered in this Chapter, each Party shall accord to nationals of another Party treatment no less favorable than it accords to its own nationals with regard to the protection2 of intellectual property rights.
  1. A Party may derogate from paragraph 1 in relation to its judicial and administrative procedures, including requiring a national of another Party to designate an address for service of process in its territory, or to appoint an agent in its territory, provided that such derogation is:

(a)       necessary to secure compliance with laws or regulations that are not inconsistent with this Chapter; and

(b)       not applied in a manner that would constitute a disguised restriction on trade.

  1. Paragraph 1 does not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights.

2   For the purposes of this paragraph, “protection” shall include matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property rights as well as matters affecting the use of intellectual property rights specifically covered by this Chapter.  Further, for the purposes of this paragraph, “protection” also includes the prohibition on the circumvention of effective technological measures set out in Article 20.H.11 (TPMs) and the provisions concerning rights management information set out in Article 20.H.12 (RMI). For greater certainty, “matters affecting the use of intellectual property rights specifically covered by this Chapter” in respect of works, performances and phonograms, include any form of payment, such as licensing fees, royalties, equitable remuneration, or levies, in respect of uses that fall under the copyright and related rights in this Chapter. The preceding sentence is without prejudice to a Party’s interpretation of “matters affecting the use of intellectual property rights” in footnote 3 of the TRIPS Agreement.

Article 20.A.9:  Transparency

  1. Further to Article 20.J.3 (Enforcement Practices with Respect to Intellectual Property Rights), each Party shall endeavor to make available on the Internet its laws, regulations, procedures and administrative rulings of general application concerning the protection and enforcement of intellectual property rights.
  1. Each Party shall, subject to its law, endeavor to make available on the Internet information that it makes public concerning applications for trademarks, geographical indications, designs, patents and plant variety rights.3, 4
  1. Each Party shall, subject to its law, make available on the Internet information that it makes public concerning registered or granted trademarks, geographical indications, designs, patents and plant variety rights, sufficient to enable the public to become acquainted with those registered or granted rights.5

Article 20.A.10: Application of Chapter to Existing Subject Matter and Prior Acts

  1. Unless otherwise provided in this Chapter, including in Article 20.H.8 (Application of Article 18 of the Berne Convention and Article 14.6 of the TRIPS Agreement), this Chapter gives rise to obligations in respect of all subject matter existing at the date of entry into force of this Agreement and that is protected on that date in the territory of a Party where protection is claimed, or that meets or comes subsequently to meet the criteria for protection under this Chapter.
  1. Unless provided in Article 20.H.8 (Application of Article 18 of the Berne Convention and Article 14.6 of the TRIPS Agreement), a Party shall not be required to restore protection to subject matter that on the date of entry into force of this Agreement has fallen into the public domain in its territory.
  1. This Chapter does not give rise to obligations in respect of acts that occurred before the date of entry into force of this Agreement.

3   For greater certainty, paragraphs 2 and 3 are without prejudice to a Party’s obligations under Article 20.C.7 (Electronic Trademarks System).

4   For greater certainty, paragraph 2 does not require a Party to make available on the Internet the entire dossier for the relevant application.

5   For greater certainty, paragraph 3 does not require a Party to make available on the Internet the entire dossier for the relevant registered or granted intellectual property right.

Article 20.A.11:  Exhaustion of Intellectual Property Rights

Nothing in this Agreement prevents a Party from determining whether or under what conditions the exhaustion of intellectual property rights applies under its legal system.6

Section B: Cooperation

Article 20.B.1:  Contact Points for Cooperation

Each Party may designate and notify the other Parties one or more contact points for the purpose of cooperation under this Section.

Article 20.B.2: Cooperation

The Parties shall endeavor to cooperate on the subject matter covered by this Chapter, such as through appropriate coordination and exchange of information between the respective intellectual property offices of the Parties, or other agencies or institutions, as determined by each Party.

Article 20.B.3: Committee

  1. The Parties hereby establish a Committee on Intellectual Property Rights (Committee), composed of government representatives of each Party.
  1. The Committee shall:

(a)        exchange information, pertaining to intellectual property rights matters, including how intellectual property protection contributes to innovation, creativity, economic growth, and employment, such as:

(i)         developments in domestic and international intellectual property law and policy;

(ii)        economic benefits related to trade and other analysis of the contributions arising from the protection and enforcement of intellectual property rights;

6   For greater certainty, this Article is without prejudice to any provisions addressing the exhaustion of intellectual property rights in international agreements to which a Party is a party.

(iii)       intellectual property issues particularly relevant to small and medium- sized enterprises; science, technology and innovation activities; and to the generation, transfer and dissemination of technology;

(iv)       approaches for reducing the infringement of intellectual property rights, as well as effective strategies for removing the underlying incentives for infringement;

(v)        programs on education and awareness related to intellectual property and build capacity regarding intellectual property rights matters; and

(vi)       implementation of multilateral intellectual property agreements, such as those concluded or administered under the auspices of WIPO.

(b)        work towards strengthening border enforcement of intellectual property rights through the promotion of collaborative operations in customs and exchange of best practices;

(c)        exchange information regarding trade secret-related matters, including the value of trade secrets and the economic loss associated with trade secret misappropriation;

(d)       discuss proposals to enhance procedural fairness in patent litigation, including with respect to choice of venue; and

(e)        upon request of any Party and in the interest of advancing transparency, endeavor to reach a mutually agreeable solution before taking measures in connection with future requests of recognition or protection of a geographical indication from any other country through a trade agreement.

  1. The Parties shall endeavor to cooperate on providing technical assistance regarding trade secret protection to the relevant authorities of non-Parties and identify appropriate opportunities to increase cooperation between the Parties on trade-related intellectual property rights protection and enforcement.
  1. The Committee shall meet within one year after the date of entry into force of this

Agreement and thereafter meet as necessary.

Article 20.B.4:  Patent Cooperation and Work Sharing

  1. The Parties recognize the importance of improving the quality and efficiency of their respective patent registration systems as well as simplifying and streamlining the procedures and processes of their respective patent offices to benefit of all users of the patent system and the public as a whole.
  1. Further to paragraph 1, the Parties shall endeavor to cooperate among their respective patent offices to facilitate the sharing and use of search and examination work of the Parties. This

may include:

(a)       making search and examination results available to the patent offices of other

Parties;7 and

(b)       exchanging information on quality assurance systems and quality standards relating to patent examination.

  1. In order to reduce the complexity and cost of obtaining the grant of a patent, the Parties shall endeavor to cooperate to reduce differences in the procedures and processes of their respective patent offices.

Article 20.B.5:  Cooperation on Request

Cooperation activities undertaken under this Chapter shall be subject to the availability of resources, and on request, and on terms and conditions mutually agreed upon between the Parties involved.   The Parties affirm that cooperation under this Section is additional to and without prejudice to other past, ongoing and future cooperation activities, both bilateral and multilateral, between the Parties, including between their respective intellectual property offices.

Section C: Trademarks

Article 20.C.1:  Types of Signs Registrable as Trademarks

No Party shall require, as a condition of registration, that a sign be visually perceptible, nor shall a Party deny registration of a trademark only on the ground that the sign of which it is composed is a sound. Additionally, each Party shall make best efforts to register scent marks. A Party may require a concise and accurate description, or graphical representation, or both, as applicable, of the trademark.

Article 20.C.2:  Collective and Certification Marks

Each Party shall provide that trademarks include collective marks and certification marks. A Party is not obligated to treat certification marks as a separate category in its law, provided that

7   The Parties recognize the importance of multilateral efforts to promote the sharing and use of search and examination results, with a view to improving the quality of search and examination processes and to reducing the costs for both applicants and patent offices.

those marks are protected. Each Party shall also provide that signs that may serve as geographical indications are capable of protection under its trademark system.8

Article 20.C.3:  Use of Identical or Similar Signs

Each Party shall provide that the owner of a registered trademark has the exclusive right to prevent third parties that do not have the owner’s consent from using in the course of trade identical or similar signs, including subsequent geographical indications9  for goods or services that are related to those goods or services in respect of which the owner’s trademark is registered, where such use would result in a likelihood of confusion.  In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

Article 20.C.4:  Exceptions

A Party may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that those exceptions take account of the legitimate interest of the owner of the trademark and of third parties.

Article 20.C.5:  Well-Known Trademarks

  1. No Party shall require as a condition for determining that a trademark is well-known that the trademark has been registered in the Party or in another jurisdiction, included on a list of well- known trademarks, or given prior recognition as a well-known trademark.
  1. Article 6bis of the Paris Convention shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark,10 whether registered or not, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the trademark, and provided that the interests of the owner of the trademark are likely to be damaged by such use.
  1. Each Party recognizes the importance of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks as adopted by the Assembly of the Paris Union for the

8   Consistent with the definition of a geographical indication in Article 20.A.1 (Definitions), any sign or combination of signs shall be eligible for protection under one or more of the legal means for protecting geographical indications, or a combination of such means.

9    For greater certainty, the Parties understand that this Article should not be interpreted to affect their rights and obligations under Articles 22 and 23 of the TRIPS Agreement.

10   In determining whether a trademark is well-known in a Party, that Party need not require that the reputation of the trademark extend beyond the sector of the public that normally deals with the relevant goods or services.

Protection of Industrial Property and the General Assembly of WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO September 20 to 29, 1999.

  1. Each Party shall provide for appropriate measures to refuse the application or cancel the registration and prohibit the use of a trademark that is identical or similar to a well-known trademark11, for identical or similar goods or services, if the use of that trademark is likely to cause confusion with the prior well-known trademark. A Party may also provide such measures including in cases in which the subsequent trademark is likely to deceive.

Article 20.C.6:  Procedural Aspects of Examination, Opposition and Cancellation

Each Party shall provide a system for the examination and registration of trademarks which includes among other things:

(a)        communicating to the applicant in writing, which may be by electronic means, the reasons for any refusal to register a trademark;

(b)        providing the applicant with an opportunity to respond to communications from the competent authorities, to contest any initial refusal, and to make a judicial appeal of any final refusal to register a trademark;

(c)         providing  an  opportunity  to  oppose  the  registration  of  a  trademark  and  an opportunity to seek cancellation12 of a trademark through, at a minimum, administrative procedures; and

(d)       requiring administrative decisions in opposition and cancellation proceedings to be reasoned and in writing, which may be provided by electronic means.

Article 20.C.7:  Electronic Trademarks System

Further to the Article 20.A.9.3 (Transparency), each Party shall provide:

(a)       a system for the electronic application for, and maintenance of, trademarks; and

(b)       a publicly available electronic information system, including an online database, of trademark applications and of registered trademarks.

11   The Parties understand that a well-known trademark is one that was already well-known before, as determined by a Party, the application for, registration of or use of the first-mentioned trademark.

12   For greater certainty, cancellation for the purposes of this Section may be implemented through nullification or revocation proceedings.

Article 20.C.8:  Classification of Goods and Services

Each Party shall adopt or maintain a trademark classification system that is consistent with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, done at Nice, June 15, 1957, as revised and amended (Nice Classification).  Each Party shall provide that:

(a)       registrations and the publications of applications indicate the goods and services by their names, grouped according to the classes established by the Nice Classification;13 and

(b)        goods or services may not be considered as being similar to each other on the ground that, in any registration or publication, they are classified in the same class of the Nice Classification.   Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other on the ground that, in any registration or publication, they are classified in different classes of the Nice Classification.

Article 20.C.9:  Term of Protection for Trademarks

Each Party shall provide that initial registration and each renewal of registration of a trademark is for a term of no less than 10 years.

Article 20.C.10:  Non-Recordal of a License

No Party shall require recordal of trademark licenses: (a)         to establish the validity of the licenses; or

(b)         as a condition for use of a trademark by a licensee to be deemed to constitute use by the holder in a proceeding that relates to the acquisition, maintenance or enforcement of trademarks.

Article 20.C.11:  Domain Names

  1. In connection with each Party’s system for the management of its country-code top-level domain (ccTLD) domain names, the following shall be available:

(a)       an appropriate procedure for the settlement of disputes that, based on, or modelled along the same lines as, the principles established in the Uniform Domain-Name Dispute-Resolution Policy or that:

(i)        is designed to resolve disputes expeditiously and at low cost,

(ii)       is fair and equitable,

(iii)      is not overly burdensome, and

(iv)      does not preclude resort to judicial proceedings, and

(b)       online public access to a reliable and accurate database of contact information concerning domain name registrants,

in accordance with each Party’s law and, if applicable, relevant administrator policies regarding protection of privacy and personal data.

  1. In connection with each Party’s system for the management of ccTLD domain names, appropriate remedies14 shall be available at least in cases in which a person registers or holds, with a bad faith intent to profit, a domain name that is identical or confusingly similar to a trademark.

Section D: Country Names

Article 20.D.1:  Country Names

Each Party shall provide the legal means for interested persons to prevent commercial use of the country name of a Party in relation to a good in a manner that misleads consumers as to the origin of that good.

Section E: Geographical Indications

Article 20.E.1:  Recognition of Geographical Indications

The Parties recognize that geographical indications may be protected through a trademark or sui generis system or other legal means.

Article 20.E.2: Administrative Procedures for the Protection or Recognition of

Geographical Indications

If a Party provides administrative procedures for the protection or recognition of geographical indications, whether through a trademark or a sui generis system, that Party shall with respect to applications for that protection or petitions for that recognition:

(a)       accept those applications or petitions without requiring intercession by a Party on behalf of its nationals;15

(b)       process those applications or petitions without imposition of overly burdensome formalities;

(c)       ensure that its laws and regulations governing the filing of those applications or petitions are readily available to the public and clearly set out the procedures for these actions;

(d)       make available information sufficient to allow the general public to obtain guidance concerning the procedures for filing applications or petitions and the processing of those applications or petitions in general; and allow an applicant, a petitioner, or their representative to ascertain the status of specific applications and petitions;

(e)       require  that  applications  or  petitions  may  specify  particular  translation  or transliteration for which protection is being sought;

(f)       examine applications or petitions;

(g)       ensure that those applications or petitions are published for opposition and provide procedures for opposing geographical indications that are the subject of applications or petitions;

(h)       provide a reasonable period of time during which any interested person may oppose the application or petition;

(i)        require that administrative decisions in opposition proceedings to be reasoned and in writing, which may be provided by electronic means;

(j)        require that administrative decisions in cancellation proceedings to be reasoned and in writing, which may be provided by electronic means; and

15  This subparagraph also applies to judicial procedures that protect or recognize a geographical indication.

(k)       provide for cancellation16 of the protection or recognition afforded to a geographical indication.

Article 20.E.3:  Grounds of Denial, Opposition, and Cancellation17

  1. If a Party protects or recognizes a geographical indication through the procedures referred to in Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications), that Party shall provide procedures that allow interested persons to object to the protection or recognition of a geographical indication, and that allow for any such protection or recognition to be refused or otherwise not afforded, at least, on the following grounds:

(a)       the geographical indication is likely to cause confusion with a trademark that is the subject of a pre-existing good faith pending application or registration in the territory of the Party;

(b)       the  geographical  indication  is  likely  to  cause  confusion  with  a  pre-existing trademark, the rights to which have been acquired in accordance with the Party’s law; and

(c)       the  geographical  indication  is  a  term  customary  in  common  language  as  the common name18, 19, 20 for the relevant good in the territory of the Party.

  1. If a Party has protected or recognized a geographical indication through the procedures referred to in Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications), that Party shall provide procedures that allow for interested persons to seek the cancellation of a geographical indication, and that allow for the protection or recognition

16   For greater certainty, for the purposes of this Section, cancellation may be implemented through nullification or revocation proceedings.

17   A Party is not required to apply this article to geographical indications for wines and spirits or to applications or petitions for those geographical indications.

18   If a Party refuses to protect or recognize a compound geographical indication on the grounds that an individual term of that geographical indication is the common name for the relevant good in the territory of a Party, the Party may withdraw its refusal of protection or recognition if the applicant or registrant agrees to disclaim any claim of exclusive rights to the particular individual term that was the basis for the refusal.

19   For greater certainty, if a Party provides for the procedures in Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications) and this Article to be applied to geographical indications for wines and spirits or applications or petitions for those geographical indications, that Party is not required to protect or recognize a geographical indication of any other Party with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in the territory of that Party.

20   For greater certainty, a term customary in common language as the common name may refer to single-component terms or individual components of multi-component terms.

to be cancelled, at least, on the grounds listed in paragraph 1. A Party may provide that the grounds listed in paragraph 1 apply as of the time of filing the request for protection or recognition of a geographical indication in the territory of the Party.21

  1. No Party shall preclude the possibility that the protection or recognition of a geographical indication may be cancelled, or otherwise cease, on the basis that the protected or recognized term has ceased meeting the conditions upon which the protection or recognition was originally granted in that Party.
  1. If a Party has in place a sui generis system for protecting unregistered geographical indications by means of judicial procedures, that Party shall provide that its judicial authorities have the authority to deny the protection or recognition of a geographical indication if any of the circumstances identified in paragraph 1 has been established.22  That Party shall also provide a process that allows interested persons to commence a proceeding on the grounds identified in paragraph 1.
  1. If a Party provides protection or recognition of a geographical indication through the procedures referred to in Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications) to the translation or transliteration of that geographical indication, that Party shall make available procedures that are equivalent to, and grounds that are the same as, those referred to in paragraphs 1 and 2 with respect to that translation or transliteration.

Article 20.E.4:  Guidelines for Determining Whether a Term is the Term Customary in the

Common Language

With respect to the procedures in Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.E.3 (Grounds of Denial, Opposition, and Cancellation), in determining whether a term is the term customary in common language as the common name for the relevant good in the territory of a Party, that Party’s authorities shall have the authority to take into account how consumers understand the term in the territory of that Party.  Factors relevant to such consumer understanding may include:

(a)        whether the term is used to refer to the type of good in question, as indicated by competent sources such as dictionaries, newspapers and relevant websites;

21  For greater certainty, if the grounds listed in paragraph 1 did not exist in a Party’s law as of the time of filing of the request for protection or recognition of a geographical indication under Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications), that Party is not required to apply those grounds for the purposes of paragraph 2 or paragraph 4 of this Article in relation to that geographical indication.

22  As an alternative to this paragraph, if a Party has in place a sui generis system of the type referred to in this paragraph as of the applicable date under Article 20.E.7.6 (International Agreements), that Party shall at least provide that its judicial authorities have the authority to deny the protection or recognition of a geographical indication if the circumstances identified in paragraph 1(c) have been established.

(b)        how the good referenced by the term is marketed and used in trade in the territory of that Party;

(c)        whether  the  term  is  used,  as  appropriate,  in  relevant  international  standards recognized by the Parties to refer to a type or class of good in the territory of the Party, such as pursuant to a standard promulgated by the Codex Alimentarius; and

(e)        whether the product in question is imported into the Party’s territory, in significant quantities23, from a place other than the territory identified in the application or petition, and whether those imported products are named by the term.

Article 20.E.5:  Multi-Component Terms

With respect to the procedures in Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.E.3 (Grounds of Denial, Opposition, and Cancellation), an individual component of a multi-component term that is protected as a geographical indication in the territory of a Party shall not be protected in that Party if that individual component is a term customary in the common language as the common name for the associated good.

Article 20.E.6:  Date of Protection of a Geographical Indication

If a Party grants protection or recognition to a geographical indication through the procedures referred to in Article 20.E.2 (Administrative Procedures for the Protection or Recognition of Geographical Indications), that protection or recognition shall commence no earlier than the filing date24 in the Party or the registration date in the Party, as applicable.

Article 20.E.7:  International Agreements

  1. If a Party protects or recognizes a geographical indication pursuant to an international agreement, as of the applicable date under paragraph 6, involving a Party or a non-Party and that geographical indication is not protected through the procedures referred to in Article 20.E.2

23    In determining whether the product in question is imported in significant quantities, a Party may consider the amount of importation at the time of the application or petition.

24    For greater certainty, the filing date referred to in this paragraph includes, as applicable, the priority filing date under the Paris Convention. No Party shall use the date of protection in a country of origin of a geographical indication to establish a priority date in the territory of the Party, unless filed within the Paris Convention priority period.

(Administrative Procedures for the Protection or Recognition of Geographical Indications)25  or Article 20.E.3 (Grounds of Denial, Opposition and Cancellation), that Party at least shall apply procedures  and  grounds  that  are  equivalent  to  those  in Article  20.E.2(f),  (g),  (h),  and  (i) (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.E.3.1 (Grounds of Denial, Opposition and Cancellation), as well as:

(a)       make available information sufficient to allow the general public to obtain guidance concerning the procedures for protecting or recognizing the geographical indication and allow interested persons to ascertain the status of requests for protection or recognition;

(b)       make available to the public, online, details regarding the terms that the Party is considering protecting or recognizing through an international agreement involving a Party or a non-Party, including specifying whether the protection or recognition is being considered for any translations or transliterations of those terms, and with respect to multi-component terms, specifying the components, if any, for which protection or recognition is being considered, or the components that are disclaimed;

(c)       in  respect  of  opposition  procedures,  provide  a  reasonable  period  of  time  for interested persons to oppose the protection or recognition of the terms referred to in subparagraph (b).   That period shall provide a meaningful opportunity for any interested person to participate in an opposition process; and

(d)       inform  the  other  Parties  of  the  opportunity  to  oppose,  no  later  than  the commencement of the opposition period.

  1. In respect of international agreements referred to in paragraph 6 that permit the protection or recognition of a new geographical indication, a Party shall:26, 27

(a)        apply paragraph 1(b) and apply at least procedures and grounds that are equivalent to those in Article 20.E.2 (f), (g), (h), and (i) (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.E.3.1 (Grounds of Denial, Opposition, and Cancellation);

25   Each Party shall apply Article 20.E.4 (Guidelines for Determining Whether a Term is the Term Customary in the Common Language) and Article 20.E.5 (Multi-Component Terms) in determining whether to grant protection or recognition of a geographical indication pursuant to this paragraph.

26  In respect of an international agreement referred to in paragraph 6 that has geographical indications that have been identified, but have not yet received protection or recognition in the territory of the Party that is a party to that agreement, that Party may fulfil the obligations of paragraph 2 by complying with the obligations of paragraph 1.

27  A Party may comply with this Article by applying Article 20.E.2 (Administrative Procedures for the Protection or

Recognition of Geographical Indications) and Article 20.E.3 (Grounds of Denial, Opposition, and Cancellation).

(b)       provide an opportunity for interested persons to comment regarding the protection or recognition of the new geographical indication for a reasonable period of time before such a term is protected or recognized; and

(c)       inform  the  other  Parties  of  the  opportunity  to  comment,  no  later  than  the commencement of the period for comment.

  1. For the purposes of this Article, a Party shall not preclude the possibility that the protection or recognition of a geographical indication could cease.
  1. For the purposes of this Article, a Party is not required to apply Article 20.E.3 (Grounds of Denial, Opposition, and Cancellation), or obligations equivalent to Article 20.E.3, to geographical indications for wines and spirits or applications for those geographical indications.
  1. Protection or recognition provided pursuant to paragraph 1 shall commence no earlier than the date on which the agreement enters into force or, if that Party grants that protection or recognition on a date after the entry into force of the agreement, on that later date.
  1. No Party shall be required to apply this Article to geographical indications that have been specifically identified in, and that are protected or recognized pursuant to, an international agreement involving a Party or a non-Party, provided that the agreement:

(a)       was concluded, or agreed in principle28, prior to the date of conclusion, or agreement in principle, of this Agreement;

(b)       was ratified by a Party prior to the date of ratification of this Agreement by that

Party; or

(c)       entered into force for a Party prior to the date of entry into force of this Agreement for that Party.

28    For the purpose of this Article, an agreement “agreed in principle” means an agreement involving another government, government entity or international organization in respect of which a political understanding has been reached and the negotiated outcomes of the agreement have been publically announced.

Section F:  Patents and Undisclosed Test or Other Data

Subsection A:  General Patents

Article 20.F.1:  Patentable Subject Matter

  1. Subject to paragraphs 3 and 4, each Party shall make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step and is capable of industrial application.29
  1. Subject to paragraphs 3 and 4 and consistent with paragraph 1, each Party confirms that patents are available for inventions claimed as at least one of the following: new uses of a known product, new methods of using a known product, or new processes of using a known product.
  1. A Party may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to nature or the environment, provided that such exclusion is not made merely because the exploitation is prohibited by its law. A Party may also exclude from patentability:

(a)       diagnostic,  therapeutic  and  surgical  methods  for  the  treatment  of  humans  or animals;

(b)       animals other than microorganisms, and essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes.

  1. A Party may also exclude from patentability plants other than microorganisms. However, consistent with paragraph 1 and subject to paragraph 3, each Party confirms that patents are available at least for inventions that are derived from plants.

Article 20.F.2: Grace Period

  1. Each Party shall disregard at least information contained in public disclosures used to determine if an invention is novel or has an inventive step, if the public disclosure:30

29  For the purposes of this Section, a Party may deem the terms “inventive step” and “capable of industrial application” to be synonymous with the terms “non-obvious” and “useful”, respectively.  In determinations regarding inventive step, or non-obviousness, each Party shall consider whether the claimed invention would have been obvious to a person skilled, or having ordinary skill in the art, having regard to the prior art.

30   For greater certainty, a Party may limit the application of this Article to disclosures made by, or obtained directly or indirectly from, the inventor or joint inventor.  For greater certainty, a Party may provide that, for the purposes of this Article, information obtained directly or indirectly from the patent applicant may be information contained in the public disclosure that was authorised by, or derived from, the patent applicant.

(a) was made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant; and

(b) occurred within twelve months prior to the filing date in the territory of the Party.

Article 20.F.3:  Patent Revocation

  1. Each Party shall provide that a patent may be cancelled, revoked or nullified only on grounds that would have justified a refusal to grant the patent. A Party may also provide that fraud, misrepresentation or inequitable conduct may be the basis for cancelling, revoking or nullifying a patent or holding a patent unenforceable.
  1. Notwithstanding paragraph 1, a Party may provide that a patent may be revoked, provided it is done in a manner consistent with Article 5A of the Paris Convention and the TRIPS Agreement.

Article 20.F.4:  Exceptions

A Party may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

Article 20.F.5:  Other Use Without Authorization of the Right Holder

The Parties understand that nothing in this Chapter limits a Party’s rights and obligations under Article 31 of the TRIPS Agreement, any waiver or any amendment to that Article that the Parties accept.

Article 20.F.6:  Amendments, Corrections and Observations

Each Party shall provide a patent applicant with at least one opportunity to make amendments, corrections and observations in connection with its application.31

Article 20.F.7:  Publication of Patent Applications

31    A Party may provide that such amendments or corrections shall not exceed the scope of the disclosure of the invention, as of the filing date.

  1. Recognizing the benefits of transparency in the patent system, each Party shall endeavour to publish unpublished pending patent applications promptly after the expiration of 18 months from the filing date or, if priority is claimed, from the earliest priority date.
  1. If a pending application is not published promptly in accordance with paragraph 1, a Party shall publish that application or the corresponding patent, as soon as practicable.
  1. Each Party  shall  provide  that  an  applicant  may  request  the  early  publication  of  an application prior to the expiration of the period referred to in paragraph 1.

Article 20.F.8:  Information Relating to Published Patent Applications and Granted

Patents

For published patent applications and granted patents, and in accordance with the Party’s requirements for prosecution of such applications and patents, each Party shall make available to the public at least the following information, to the extent that such information is in the possession of the competent authorities and is generated on, or after, the date of the entry into force of this Agreement for that Party:

(a)       search and examination results, including details of, or information related to, relevant prior art searches;

(b)       as appropriate, non-confidential communications from applicants; and

(c)       patent  and  non-patent  related  literature  citations  submitted  by  applicants  and relevant third parties.

Article 20.F.9:  Patent Term Adjustment for Unreasonable Granting Authority Delays

  1. Each Party shall make best efforts to process patent applications in an efficient and timely manner, with a view to avoiding unreasonable or unnecessary delays.
  1. A Party  may  provide  procedures  for  a  patent  applicant  to  request  to  expedite  the examination of its patent application.
  1. If there are unreasonable delays in a Party’s issuance of a patent, that Party shall provide the means to, and at the request of the patent owner shall, adjust the term of the patent to compensate for such delays.
  1. For the purposes of this Article, an unreasonable delay at least shall include a delay in the issuance of a patent of more than five years from the date of filing of the application in the territory of the Party, or three years after a request for examination of the application has been made, whichever is later. A Party may exclude, from the determination of such delays, periods of time

that do not occur during the processing32 of, or the examination of, the patent application by the granting authority; periods of time that are not directly attributable33 to the granting authority; as well as periods of time that are attributable to the patent applicant.34

32   For the purposes of this paragraph, a Party may interpret processing to mean initial administrative processing and administrative processing at the time of grant.

33  A Party may treat delays “that are not directly attributable to the granting authority” as delays that are outside the direction or control of the granting authority.

34   Notwithstanding Article 20.A.10 (Application of Chapter to Existing Subject Matter and Prior Acts), this Article shall apply to all patent applications filed after the date of entry into force of this Agreement for that Party, or the date two years after the signing of this Agreement, whichever is later for that Party.

Subsection B:  Measures Relating to Agricultural Chemical Products

Article 20.F.10:  Protection of Undisclosed Test or Other Data for Agricultural Chemical

Products

  1. If a Party requires, as a condition for granting marketing approval35 for a new agricultural chemical product, the submission of undisclosed test or other data concerning the safety and efficacy of the product36, that Party shall not permit third persons, without the consent of the person that previously submitted such information, to market the same or a similar37 product on the basis of that information or the marketing approval granted to the person that submitted such test or other data for at least 10 years38  from the date of marketing approval of the new agricultural chemical product in the territory of the Party.
  1. If a Party permits, as a condition of granting marketing approval for a new agricultural chemical product, the submission of evidence of a prior marketing approval of the product in another territory, that Party shall not permit third persons, without the consent of the person that previously submitted undisclosed test or other data concerning the safety and efficacy of the product in support of that prior marketing approval, to market the same or a similar product based on that undisclosed test or other data, or other evidence of the prior marketing approval in the other territory, for at least 10 years from the date of marketing approval of the new agricultural chemical product in the territory of the Party.
  1. For the purposes of this Article, a new agricultural chemical product is one that contains a chemical entity that has not been previously approved in the territory of the Party for use in an agricultural chemical product.

35   For the purposes of this Chapter, the term “marketing approval” is synonymous with “sanitary approval” under a

Party’s law.

36  Each Party confirms that the obligations of this Article apply to cases in which the Party requires the submission of undisclosed test or other data concerning: (a) only the safety of the product, (b) only the efficacy of the product or (c) both.

37   For greater certainty, for the purposes of this Section, an agricultural chemical product is “similar” to a previously approved agricultural chemical product if the marketing approval, or, in the alternative, the applicant’s request for such approval, of that similar agricultural chemical product is based upon the undisclosed test or other data concerning the safety and efficacy of the previously approved agricultural chemical product, or the prior approval of that previously approved product.

38   For greater certainty, a Party may limit the period of protection under this Article to 10 years.

Subsection C: Measures Relating to Pharmaceutical Products

Article 20.F.11:  Patent Term Adjustment for Unreasonable Curtailment

  1. Each Party shall make best efforts to process applications for marketing approval of pharmaceutical products in an efficient and timely manner, with a view to avoiding unreasonable or unnecessary delays.
  1. With respect to a pharmaceutical product that is subject to a patent, each Party shall make available an adjustment39 of the patent term to compensate the patent owner for unreasonable curtailment of the effective patent term as a result of the marketing approval process.
  1. For greater certainty, in implementing the obligations of this Article, each Party may provide for conditions and limitations, provided that the Party continues to give effect to this Article.
  1. With the objective of avoiding unreasonable curtailment of the effective patent term, a Party may adopt or maintain procedures that expedite the processing of marketing approval applications.

Article 20.F.12:  Regulatory Review Exception

Without prejudice to the scope of, and consistent with, Article 20.F.4 (Exceptions), each

Party shall adopt or maintain a regulatory review exception for pharmaceutical products.

Article 20.F.13:  Protection of Undisclosed Test or Other Data

  1. (a)  If a Party requires, as a condition for granting marketing approval for a new pharmaceutical product, the submission of undisclosed test or other data concerning the safety and efficacy of the product40, that Party shall not permit third persons,

39    For greater certainty, a Party may alternatively make available a period of additional sui generis protection to compensate for unreasonable curtailment of the effective patent term as a result of the marketing approval process. The sui generis protection shall confer the rights conferred by the patent, subject to any conditions and limitations pursuant to paragraph 3.

40   Each Party confirms that the obligations of this Article, and Article 20.F.14 (Biologics) apply to cases in which the Party requires the submission of undisclosed test or other data concerning: (a) only the safety of the product, (b) only the efficacy of the product or (c) both.

without the consent of the person that previously submitted such information, to market the same or a similar41 product on the basis of:

(i)        that information; or

(ii)       the  marketing  approval  granted  to  the  person  that  submitted  such information,

for  at  least  five  years42   from  the  date  of  marketing  approval  of  the  new pharmaceutical product in the territory of the Party.

(b)       If  a  Party  permits,  as  a  condition  of  granting  marketing  approval  for  a  new pharmaceutical product, the submission of evidence of prior marketing approval of the product in another territory, that Party shall not permit third persons, without the consent of a person that previously submitted such information concerning the safety and efficacy of the product, to market a same or a similar product based on evidence relating to prior marketing approval in the other territory for at least five years from the date of marketing approval of the new pharmaceutical product in the territory of that Party.

  1. Each Party shall:43

(a)       apply paragraph 1, mutatis mutandis, for a period of at least three years with respect to new clinical information submitted as required in support of a marketing approval of a previously approved pharmaceutical product covering a new indication, new formulation or new method of administration; or, alternatively,

(b)       apply paragraph 1, mutatis mutandis, for a period of at least five years to new pharmaceutical products that contain a chemical entity that has not been previously approved in that Party.44

41   For greater certainty, for the purposes of this Section, a pharmaceutical product is “similar” to a previously approved pharmaceutical product if the marketing approval, or, in the alternative, the applicant’s request for such approval, of that similar pharmaceutical product is based upon the undisclosed test or other data concerning the safety and efficacy of the previously approved pharmaceutical product, or the prior approval of that previously approved product.

42   For greater certainty, a Party may limit the period of protection under paragraph 1 to five years, and the period of protection under Article 20.F.14.1(a) (Biologics) to 10 years.

43  A Party that provides a period of at least 8 years of protection pursuant to paragraph 1 is not required to apply paragraph 2.

44    For the purposes of Article 20.F.13.2(b) (Protection of Undisclosed Test or Other Data), a Party may choose to protect only the undisclosed test or other data concerning the safety and efficacy relating to the chemical entity that has not been previously approved.

  1. Notwithstanding paragraphs 1 and 2 and Article 20.F.14 (Biologics), a Party may take measures to protect public health in accordance with:

(a)       the Declaration on TRIPS and Public Health;

(b)       any waiver of any provision of the TRIPS Agreement granted by WTO Members in accordance with the WTO Agreement to implement the Declaration on TRIPS and Public Health and that is in force between the Parties; or

(c)       any amendment of the TRIPS Agreement to implement the Declaration on TRIPS

and Public Health that enters into force with respect to the Parties.

Article 20.F.14:  Biologics

  1. With regard to protecting new biologics, a Party shall, with  respect  to  the  first marketing  approval  in  a  Party  of  a  new  pharmaceutical  product  that  is  or  contains  a biologic,45, 46   provide  effective  market  protection  through  the  implementation  of Article

20.F.13.1 (Protection of Undisclosed Test or Other Data) and Article 20.F.13.3 ( Protection of Undisclosed Test or Other Data), mutatis mutandis, for a period of at least ten years from the date of first marketing approval of that product in that Party.

  1. Each Party shall apply this Article to, at a minimum47, a product that is produced using biotechnology processes and that is, or, alternatively, contains, a virus, therapeutic serum, toxin, antitoxin, vaccine, blood, blood component or derivative, allergenic product, protein, or analogous product, for use in human beings for the prevention, treatment, or cure of a disease or condition.

45   Nothing requires a Party to extend the protection of this paragraph to:

(a)      any second or subsequent marketing approval of such a pharmaceutical product; or

(b)      a pharmaceutical product that is or contains a previously approved biologic.

46   Each Party may provide that an applicant may request approval of a pharmaceutical product that is or contains a biologic under the procedures set forth in Article 20.F.13.1(a) (Protection of  Undisclosed Test or Other Data subparagraph 1(a)) and Article 20.F.13.1(b) (Protection of  Undisclosed Test or Other Data subparagraph 1(b)) on or before March 23, 2020, provided that other pharmaceutical products in the same  class of products have been approved by that Party under the procedures set forth in in Article 20.F.13.1(a) (Protection of  Undisclosed Test or Other Data subparagraph 1(a)) and Article 20.F.13.1(b) (Protection of  Undisclosed

Test or Other Data subparagraph 1(b)) before the date of entry into force of this Agreement for that  Party.

47   For greater certainty, for the purposes of this Article, the Parties understand that “at a minimum” means that a Party may limit the application to the scope specified in this paragraph.

Article 20.F.15:  Definition of New Pharmaceutical Product

For the purposes of Article 20.F.13.1 (Protection of Undisclosed Test or Other Data), a new pharmaceutical product means a pharmaceutical product that does not contain a chemical entity that has been previously approved in that Party.

Article 20.F.16:  Measures Relating to the Marketing of Certain Pharmaceutical Products

  1. If a Party permits, as a condition of approving the marketing of a pharmaceutical product, persons, other than the person originally submitting the safety and efficacy information, to rely on evidence or information concerning the safety and efficacy of a product that was previously approved, such as evidence of prior marketing approval by the Party or in another territory, that Party shall provide:

(a)       a system to provide notice to a patent holder48 or to allow for a patent holder to be notified prior to the marketing of such a pharmaceutical product, that such other person is seeking to market that product during the term of an applicable patent claiming the approved product or its approved method of use;

(b)       adequate time and sufficient opportunity for such a patent holder to seek, prior to the marketing of an allegedly infringing product, available remedies in subparagraph (c); and

(c)       procedures,  such  as  judicial  or  administrative  proceedings,  and  expeditious remedies, such as preliminary injunctions or equivalent effective provisional measures, for the timely resolution of disputes concerning the validity or infringement of an applicable patent claiming an approved pharmaceutical product or its approved method of use.

  1. As an alternative to paragraph 1, a Party shall instead adopt or maintain a system other than judicial proceedings that precludes, based upon patent-related information submitted to the marketing approval authority by a patent holder or the applicant for marketing approval, or based on direct coordination between the marketing approval authority and the patent office, the issuance of marketing approval to any third person seeking to market a pharmaceutical product subject to a patent claiming that product, unless by consent or acquiescence of the patent holder.

48   For greater certainty, for the purposes of this Article, a Party may provide that a “patent holder” includes a patent licensee or the authorized holder of marketing approval.

Article 20.F.17:  Alteration of Period of Protection

Subject to Article 20.F.13.3 (Protection of Undisclosed Test or Other Data), if a product is subject to a system of marketing approval in the territory of a Party pursuant to Article 20.F.10 (Protection of Undisclosed Test or Other Data for Agricultural Chemical Products), Article 20.F.13 or Article 20.F.14 (Biologics) and is also covered by a patent in the territory of that Party, the Party shall not alter the period of protection that it provides pursuant to Article 20.F.10, Article 20.F.13 or Article 20.F.14 in the event that the patent protection terminates on a date earlier than the end of the period of protection specified in Article 20.F.10, Article 20.F.13 or Article 20.F.14.

Section G: Industrial Designs

Article 20.G.1:  Protection

  1. Each Party shall ensure adequate and effective protection of industrial designs consistent with Articles 25 and 26 of the TRIPS Agreement.
  1. Consistent with paragraph 1, each Party confirms that protection is available for designs embodied in a part of an article.

Article 20.G.2: Non-Prejudicial Disclosures/Grace Period49

Each Party shall disregard at least information contained in public disclosures used to determine if an industrial design is new, original, or, where applicable, non-obvious, if the public disclosure:50

(a)       was made by the design applicant or by a person that obtained the information directly or indirectly from the design applicant; and

(b)       occurred within twelve months prior to the filing date in the territory of the Party.

Article 20.G.3:  Electronic Industrial Design System

Each Party shall provide:

49  Articles 20.G.2 (Non-Prejudicial Disclosures/Grace Period) and 20.G.3 (Electronic Industrial Design System) shall apply with respect to industrial design patent systems or industrial design registration systems.

50   For greater certainty, a Party may limit the application of this Article to disclosures made by, or obtained directly or indirectly from, the creator or co-creator and provide that, for the purposes of this Article, information obtained directly or indirectly from the design applicant may be information contained in the public disclosure that was authorised by, or derived from, the design applicant.

(a)       a system for the electronic application for industrial design rights; and

(b)        a publically available electronic information system, which shall include an online database of protected industrial designs.

Article 20.G.4: Term of Protection

Each Party shall provide a term of protection for industrial designs of at least 15 years from either: (a) the date of filing or (b) the date of grant or registration.

Section H: Copyright and Related Rights

Article 20.H.1:  Definitions

For the purposes of Article 20.H.2 (Right of Reproduction) and Article 20.H.4 (Right of Distribution) through Article 20.H.13 (Collective Management), the following definitions apply with respect to performers and producers of phonograms:

broadcasting means the transmission by wireless means for public reception of sounds or of images and sounds or of the representations thereof; such transmission by satellite is also “broadcasting”; transmission of encrypted signals is “broadcasting” if the means for decrypting are provided to the public by the broadcasting organization or with its consent; “broadcasting” does not include transmission over computer networks or any transmissions where the time and place of reception may be individually chosen by members of the public;

communication to the public of a performance or a phonogram means the transmission to the public by any medium, other than by broadcasting, of sounds of a performance or the sounds or the representations of sounds fixed in a phonogram;

fixation means the embodiment of sounds, or of the representations thereof, from which they can be perceived, reproduced, or communicated through a device;

performers means actors, singers, musicians, dancers, and other persons who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of folklore;

phonogram means the fixation of the sounds of a performance or of other sounds, or of a representation of sounds, other than in the form of a fixation incorporated in a cinematographic or other audio-visual work;

producer of a phonogram means a person that takes the initiative and has the responsibility for the first fixation of the sounds of a performance or other sounds, or the representations of sounds; and

publication of a performance or phonogram means the offering of copies of the performance or the phonogram to the public, with the consent of the right holder, and provided that copies are offered to the public in reasonable quantity.

Article 20.H.2:  Right of Reproduction

Each Party shall provide51  to authors, performers and producers of phonograms52  the exclusive right to authorize or prohibit all reproduction of their works, performances or phonograms in any manner or form, including in electronic form.

Article 20.H.3:  Right of Communication to the Public

Without prejudice to Article 11(1)(ii), Article 11bis(1)(i) and (ii), Article 11ter(1)(ii), Article 14(1)(ii), and Article 14bis(1) of the Berne Convention, each Party shall provide to authors the exclusive right to authorize or prohibit the communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.53

Article 20.H.4:  Right of Distribution

Each Party shall provide to authors, performers and producers of phonograms the exclusive right to authorize or prohibit the making available to the public of the original and copies54 of their works, performances and phonograms through sale or other transfer of ownership.

51   For greater certainty, the Parties understand that it is a matter for each Party’s law to prescribe that works, performances or phonograms in general or any specified categories of works, performances and phonograms are not protected by copyright or related rights unless the work, performance or phonogram has been fixed in some material form.

52   References to “authors, performers, and producers of phonograms” refer also to any of their successors in interest.

53  The Parties understand that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Chapter or the Berne Convention. The Parties further understand that nothing in this Article precludes a Party from applying Article 11bis(2) of the Berne Convention.

54  The expressions “copies” and “original and copies”, that are subject to the right of distribution in this Article, refer exclusively to fixed copies that can be put into circulation as tangible objects.

Article 20.H.5:  No Hierarchy

Each Party shall provide that in cases in which authorization is needed from both the author of a work embodied in a phonogram and a performer or producer that owns rights in the phonogram:

(a)       the need for the authorization of the author does not cease to exist because the authorization of the performer or producer is also required; and

(b)       the need for the authorization of the performer or producer does not cease to exist because the authorization of the author is also required.

Article 20.H.6:  Related Rights

  1. In addition  to  protection  afforded  to  performers  and  producers  of  phonograms  as “nationals” under Article 20.A.8 (National Treatment), each Party shall accord the rights provided for in this Chapter to performances or phonograms first published or first fixed55 in the territory of another Party.56   A performance or phonogram shall be considered first published in the territory of a Party if it is published in the territory of that Party within 30 days of its original publication.
  1. Each Party shall provide to performers the exclusive right to authorize or prohibit:
(a) the broadcasting and communication to the public of their unfixed performances, unless the performance is already a broadcast performance; and
(b) the fixation of their unfixed performances.
3. (a) Each Party shall provide to performers and producers of phonograms the exclusive
right to authorize or prohibit the broadcasting or any communication to the public

of their performances or phonograms, by wire or wireless means57 and the making

available to the public of those performances or phonograms in such a way that
members of the public may access them from a place and at a time individually
chosen by them.

55   For the purposes of this Article, fixation means the finalization of the master tape or its equivalent.

56   For greater certainty, consistent with Article 20.A.8 (National Treatment), each Party shall accord to performances and phonograms first published or first fixed in the territory of another Party treatment no less favorable than it accords to performances or phonograms first published or first fixed in its own territory.

57   For greater certainty, the obligation under this paragraph does not include broadcasting or communication to the public, by wire or wireless means, of the sounds or representations of sounds fixed in a phonogram that are incorporated in a cinematographic or other audio-visual work.

(b)       Notwithstanding subparagraph (a) and Article 20.H.9 (Limitations and Exceptions), the application of the right referred to in subparagraph (a) to analog transmissions and non-interactive free over-the-air broadcasts, and exceptions or limitations to this right for those activities, is a matter of each Party’s law. 58

(c)        Each party may adopt limitations to this right in respect of other noninteractive transmissions in accordance with Article 20.H.9.1 (Limitations and Exceptions), provided that the limitations do not prejudice the right of the performer or producer of phonograms to obtain equitable remuneration.

Article 20.H.7:  Term of Protection for Copyright and Related Rights

Each  Party  shall  provide  that  in  cases  in  which  the  term  of  protection  of  a  work, performance or phonogram is to be calculated:

(a)       on the basis of the life of a natural person, the term shall be not less than the life of the author and 70 years after the author’s death;59 and

(b)       on a basis other than the life of a natural person, the term shall be:

(i)        not less than 75 years from the end of the calendar year of the first authorized publication60 of the work, performance or phonogram; or

(ii)       failing such authorized publication within 25 years from the creation of the work, performance or phonogram, not less than 70 years from the end of the calendar year of the creation of the work, performance or phonogram.

58   For the purposes of this subparagraph the Parties understand that a Party may provide for the retransmission of non-interactive, free over-the-air broadcasts, provided that these retransmissions are lawfully permitted by that Party’s government communications authority; any entity engaging in these retransmissions complies with the relevant rules, orders or regulations of that authority; and these retransmissions do not include those delivered and accessed over the Internet. For greater certainty this footnote does not limit a Party’s ability to avail itself of this subparagraph.

59  The Parties understand that if a Party provides its nationals a term of copyright protection that exceeds life of the author plus 70 years, nothing in this Article or Article 20.A.8 (National Treatment) shall preclude that Party from applying Article 7(8) of the Berne Convention with respect to the term in excess of the term provided in this subparagraph of protection for works of another Party.

60   For greater certainty, for the purposes of subparagraph (b), if a Party’s law provides for the calculation of term from fixation rather than from the first authorized publication that Party may continue to calculate the term from fixation.

Article 20.H.8: Application of Article 18 of the Berne Convention and Article 14.6 of the

TRIPS Agreement

Each Party shall apply Article 18 of the Berne Convention and Article 14.6 of the TRIPS Agreement, mutatis mutandis, to works, performances and phonograms, and the rights in and protections afforded to that subject matter as required by this Section.

Article 20.H.9:  Limitations and Exceptions

  1. With respect to this Section, each Party shall confine limitations or exceptions to exclusive rights to certain special cases that do not conflict with a normal exploitation of the work, performance or phonogram, and do not unreasonably prejudice the legitimate interests of the right holder.
  1. This Article does not reduce or extend the scope of applicability of the limitations and exceptions permitted by the TRIPS Agreement, the Berne Convention, the WCT or the WPPT.

Article 20.H.10:  Contractual Transfers

Each Party shall provide that for copyright and related rights, any person acquiring or holding any economic right61 in a work, performance or phonogram:

(a)       may freely and separately transfer that right by contract; and

61   For greater certainty, this provision does not affect the exercise of moral rights.

(b)        by virtue of contract, including contracts of employment underlying the creation of works, performances or phonograms, shall be able to exercise that right in that person’s own name and enjoy fully the benefits derived from that right.62

Article 20.H.11:  Technological Protection Measures (TPMs)63

  1. In order to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that authors, performers, and producers of phonograms use in connection with the exercise of their rights and that restrict unauthorized acts in respect of their works, performances, and phonograms, each Party shall provide64 that any person who:

(a)        knowingly, or having reasonable grounds to know65, circumvents without authority any effective technological measure that controls access to a protected work, performance, or phonogram66; or

(b)        manufactures, imports, distributes, offers for sale or rental to the public, or otherwise provides devices, products, or components, or offers to the public or provides services, that:

(i)        are promoted, advertised, or otherwise marketed by that person for the purpose of circumventing any effective technological measure,

62   Nothing in this Article affects a Party’s ability to establish: (i) which specific contracts underlying the creation of works, performances or phonograms shall, in the absence of a written agreement, result in a transfer of economic rights by operation of law; and (ii) reasonable limits to protect the interests of the original right holders, taking into account the legitimate interests of the transferees.

63   Nothing in this Agreement requires a Party to restrict the importation or domestic sale of a device that does not render effective a technological measure the only purpose of which is to control market segmentation for legitimate physical copies of a cinematographic film, and is not otherwise a violation of its law.

64   A Party that, prior to the date of entry into force of this Agreement, maintains legal protections for technological protection measures consistent with Article 18.H.11.1, may maintain its current scope of limitations, exceptions, and regulations regarding circumvention.

65   For greater certainty, for the purposes of this subparagraph, a Party may provide that reasonable grounds to know may be demonstrated through reasonable evidence, taking into account the facts and circumstances surrounding the alleged illegal act.

66   For greater certainty, no Party is required to impose civil or criminal liability under this subparagraph for a person that circumvents any effective technological measure that protects any of the exclusive rights of copyright or related rights in a protected work, performance or phonogram, but does not control access to that work, performance or phonogram.

(ii)        have only a limited commercially significant purpose or use other than to circumvent any effective technological measure, or

(iii)       are primarily designed, produced, or performed for the purpose of circumventing any effective technological measure,

shall be liable and subject to the remedies provided for in Article 20.J.4.18 (Civil and

Administrative Procedures and Remedies).67

Each Party shall provide for criminal procedures and penalties to be applied when any person, other than a non-profit library, archive, educational institution, or public noncommercial broadcasting entity, is found to have engaged willfully and for the purposes of commercial advantage or private financial gain in any of the foregoing activities.

Such criminal procedures and penalties shall include the application to such activities listed in subparagraphs (a), (c), and (f) of Article 20.J.7.6 as applicable to infringements, mutatis mutandis.

  1. In implementing paragraph 1, no Party shall be obligated to require that the design of, or the design and selection of parts and components for, a consumer electronics, telecommunications, or computing product provide for a response to any particular technological measure, so long as the product does not otherwise violate any measure implementing paragraph

1.

  1. Each Party shall provide that a violation of a measure implementing this Article is a separate cause of action, independent of any infringement that might occur under the Party’s law on copyright and related rights.
  1. Each Party shall confine exceptions and limitations to measures implementing paragraph

1 to the following activities, which shall be applied to relevant  measures in accordance with paragraph 568:

(a)        noninfringing reverse engineering activities with regard to a lawfully  obtained copy of a computer program, carried out in good faith with respect to particular elements of that computer program that have not been  readily available to the person engaged in those activities, for the sole purpose of achieving interoperability of an independently created computer program with other programs;

(b)       noninfringing good faith activities, carried out by an appropriately qualified researcher who has lawfully obtained a copy, unfixed performance, or display of

67  For greater certainty, no Party is required to impose liability under this Article and Article 20.H.12 (RMI) for actions taken by that Party or a third person acting with authorization or consent of the Party.

68  Any Party may request consultations with the other Parties to consider how to address, under paragraph 4,  activities of a similar nature that a Party identifies after the date this Agreement enters into force.

a work, performance, or phonogram and who  has made a good faith effort to obtain authorization for such activities, to  the extent necessary for the sole purpose of research consisting of identifying and analyzing flaws and vulnerabilities of technologies for  scrambling and descrambling of information;

(c)        the inclusion of a component or part for the sole purpose of preventing the access of minors to inappropriate online content in a technology, product, service, or device that itself is not prohibited under the measures implementing paragraph (1)(b);

(d)       noninfringing good faith activities that are authorized by the owner of a computer, computer system, or computer network for the sole purpose of testing, investigating, or correcting the security of that computer, computer system, or computer network;

(e)        noninfringing activities for the sole purpose of identifying and disabling a capability to carry out undisclosed collection or dissemination of personally identifying information reflecting the online activities of a natural person in a way that has no other effect on the ability of any person to gain access to any work;

(f)        lawfully authorized activities carried out by government employees,  agents, or contractors for the purpose of law enforcement, intelligence,  essential security, or similar governmental purposes;

(g)        access by a nonprofit library, archive, or educational institution to a work, performance, or phonogram not otherwise available to it, for the sole purpose of making acquisition decisions; and

(h)        in addition, a Party may provide additional exceptions or limitations for noninfringing uses of a particular class of works, performances, or phonograms, when an actual or likely  adverse impact on those noninfringing uses is demonstrated by substantial evidence in a legislative, regulatory  or administrative proceeding in accordance with the Party’s law.

  1. 5. The exceptions and limitations to measures implementing paragraph 1 for the  activities set forth in paragraph 4 may only be applied as follows, and  only to the extent that they do not impair the adequacy of legal protection or the effectiveness of legal remedies against the circumvention of effective technological measures under the Party’s legal system:

(a)        Measures implementing subparagraph (1)(a) may be subject to exceptions  and limitations with respect to each activity set forth in paragraph (4).

(b)        Measures implementing subparagraph (1)(b), as they apply to effective technological measures that control access to a work, performance, or phonogram, may be subject to exceptions and limitations with respect to

activities set forth in subparagraph (4) (a), (b), (c), (d), and (f).

(c)       Measures implementing paragraph (1)(b), as they apply to effective technological measures that protect any copyright or any rights related to copyright, may be subject to exceptions and limitations with respect to activities set forth in subparagraph (4)(a) and (f).

  1. Effective technological measure means any technology, device, or component that, in the normal course of its operation, controls access to a protected work, performance, or phonogram, or protects any copyright or any rights related to copyright.69

Article 20.H.12:  Rights Management Information (RMI)70

  1. In order to provide adequate and effective legal remedies to protect RMI:

(a)        each Party shall provide that any person that, without authority, and knowing, or having reasonable grounds to know, that it would induce, enable, facilitate or conceal an infringement of the copyright or related right of authors, performers or producers of phonograms:

(i)        knowingly71 removes or alters any RMI;

(ii)       knowingly distributes or imports for distribution RMI knowing that the RMI

has been altered without authority;72 or

(iii)      knowingly distributes, imports for distribution, broadcasts, communicates or makes available to the public copies of works, performances or phonograms, knowing that RMI has been removed or altered without authority,

is liable and subject to the remedies set out in Article 20.J.4 (Civil and Administrative Procedures and Remedies).

69    For greater certainty, a technological measure that can, in a usual case, be circumvented accidentally is not an

“effective” technological measure.

70  A Party may comply with the obligations in this Article by providing legal protection only to electronic RMI.

71   For greater certainty, a Party may extend the protection afforded by this paragraph to circumstances in which a person engages without knowledge in the acts in sub-subparagraphs (i), (ii) and (iii), and to other related right holders.

72  A Party may also meet its obligation under this sub-subparagraph, if it provides effective protection for original compilations, provided that the acts described in this sub-subparagraph are treated as infringements of copyright in those original compilations.

Each Party shall provide for criminal procedures and penalties to be applied if any person is found to have engaged willfully and for purposes of commercial advantage or financial gain in any of the above activities.

A Party may provide that the criminal procedures and penalties do not apply to a non-profit library, museum, archive, educational institution or public non-commercial broadcasting entity.73

  1. For  greater  certainty,  nothing  prevents  a  Party  from excluding  from  a  measure  that implements paragraph 1 a lawfully authorized activity that is carried out for the purpose of law enforcement, essential security interests or other related governmental purposes, such as the performance of a statutory function.
  1. For greater certainty, nothing in this Article shall obligate a Party to require a right holder in a work, performance or phonogram to attach RMI to copies of the work, performance or phonogram, or to cause RMI to appear in connection with a communication of the work, performance or phonogram to the public.
  1. RMI means:

(a)        information that identifies a work, performance or phonogram, the author of the work, the performer of the performance or the producer of the phonogram; or the owner of any right in the work, performance or phonogram;

(b)        information about the terms and conditions of the use of the work, performance or phonogram; or

(c)         any numbers or codes that represent the information referred to in subparagraphs

(a) and (b),

if any of these items is attached to a copy of the work, performance or phonogram or appears in connection with the communication or making available of a work, performance or phonogram to the public.

Article 20.H.13:  Collective Management

The Parties recognize the important role of collective management societies for copyright and related rights in collecting and distributing royalties74 based on practices that are fair, efficient,

73   For greater certainty, a Party may treat a broadcasting entity established without a profit-making purpose under its law as a public non-commercial broadcasting entity.

74   For greater certainty, royalties may include equitable remuneration.

transparent  and  accountable,  which  may  include  appropriate  record  keeping  and  reporting mechanisms.

Section I: Trade Secrets75, 76

In the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention, each Party shall ensure that persons have the legal means to prevent trade secrets lawfully in their control from being disclosed to, acquired by, or used by others (including state-owned enterprises) without their consent in a manner contrary to honest commercial practices.

Article 20.I.1:  Civil Protection and Enforcement

In fulfilling its obligation under paragraphs 1 and 2 of Article 39 of the TRIPS Agreement, each Party shall:

(a)        provide civil judicial procedures77  for any person lawfully in control of a trade secret to prevent, and obtain redress for, the misappropriation of the trade secret by any other person; and

(b)       not limit the duration of protection for a trade secret, so long as the conditions in

Article 20.I.3 (Definitions) exist.

Article 20.I.2:  Criminal Enforcement

  1. Subject to paragraph 2, each Party shall provide for criminal procedures and penalties for the unauthorized and willful misappropriation78 of a trade secret.
  1. With respect to the relevant acts referred to in paragraph 1, a Party may, as appropriate, limit the availability of its procedures, or limit the level of penalties available, to one or more of the following cases in which:

75   For greater certainty, the enforcement obligations and principles set forth in Section J also apply to the obligations in this section, as relevant.

76  For greater certainty, this Section is without prejudice to a Party’s measures protecting good faith lawful disclosures to provide evidence of a violation of that Party’s law.

77  For greater certainty, civil judicial procedures do not have to be federal provided that such procedures are available.

78   For the purposes of this Article, “willful misappropriation” requires a person to have known that the trade secret was acquired in a manner contrary to honest commercial practices.

(a)       the acts are for the purposes of commercial advantage or financial gain;

(b)       the acts are related to a product or service in national or international commerce; or

(c)       the acts are intended to injure the owner of such trade secret.

Article 20.I.3:  Definitions

For the purposes of this section:

Trade secret means information that:

(a)        is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

(b)       has actual or potential commercial value because it is secret; and

(c)        has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

Misappropriation means the acquisition, use, or disclosure of a trade secret in a manner contrary to honest commercial practices, including the acquisition, use, or disclosure of a trade secret by a third party that knew, or had reason to know, that the trade secret was acquired in a manner contrary to honest commercial practices.79

Misappropriation does not include situations in which a person: (a)            reverse engineered an item lawfully obtained;

(b)       independently discovered information claimed as a trade secret; or

(c)        acquired the subject information from another person in a legitimate  manner without an obligation of confidentiality or knowledge that the information was a trade secret.

Manner contrary to honest commercial practices means at least practices such as breach of contract,  breach  of  confidence  and  inducement  to  breach,  and  includes  the  acquisition  of

79   For greater certainty, “misappropriation” as defined in this paragraph includes cases in which the acquisition, use, or disclosure involves a computer system.

undisclosed information by third parties that knew, or were grossly negligent in failing to know, that those practices were involved in the acquisition.

Article 20.I.4: Provisional Measures

In the civil judicial proceedings described in Article 20.I.1 (Civil Protection and Enforcement), each Party shall provide that its judicial authorities have the authority to order prompt and effective provisional measures, such as orders to prevent the misappropriation of the trade secret and to preserve relevant evidence.

Article 20.I.5: Confidentiality

In connection with the civil judicial proceedings described in Article 20.I.1 (Civil Protection and Enforcement), each Party shall provide that its civil judicial authorities have the authority to:

(a)        order specific procedures to protect the confidentiality of any trade secret, alleged trade secret, and any other information asserted by an interested party to be confidential; and

(b)        impose sanctions on parties, counsel, experts, or other persons subject to such proceedings, related to violation of orders concerning the protection of a trade secret or alleged trade secret produced or exchanged in that proceeding, as well as any other information asserted by an interested party to be confidential.

Each Party shall further provide in its law that, in cases in which an interested party asserts information to be a trade secret, its judicial authorities shall not disclose that information without first providing that person with an opportunity to make a submission under seal that describes the interest of that person in keeping the information confidential.

Article 20.I.6:  Civil Remedies

In connection with the civil judicial proceedings described in Article 20.I.1 (Civil Protection  and  Enforcement),  each  Party  shall  provide  that  its judicial  authorities  have  the authority at least to:

(a)        order injunctive relief that conforms to Article 44 of the TRIPS Agreement against a person that misappropriated a trade secret; and

(b)        order a person that misappropriated a trade secret to pay damages adequate to compensate the person lawfully in control of the trade secret for the injury suffered

because of the misappropriation of the trade secret80  and,  where appropriate, because of the proceedings to enforce the trade secret.

Article 20.I.7:  Licensing and Transfer of Trade Secrets

No Party may discourage or impede the voluntary licensing of trade secrets by imposing excessive or discriminatory conditions on such licenses or conditions that dilute the value of the trade secrets.

Article 20.I.8:  Prohibition of Unauthorized Disclosure or Use of a Trade Secret by

Government Officials Outside the Scope of Their Official Duties

  1. In civil, criminal and regulatory proceedings in which trade secrets may be submitted to a court or government entity, each Party shall prohibit the unauthorized disclosure of a trade secret by a government official at the central level of government outside the scope of that person’s official duties.
  1. Each Party shall provide for in its law deterrent level penalties, including monetary fines, suspension or termination of employment, and imprisonment, to guard against the unauthorized disclosure of a trade secret described in paragraph 1.

Section J: Enforcement

Article 20.J.1:  General Obligations

  1. Each Party shall ensure that enforcement procedures as specified in this Section are available under its law so as to permit effective action against any act of infringement of intellectual property rights covered by this Chapter, including expeditious remedies to prevent infringements and remedies that constitute a deterrent to future infringements.81 These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.
  1. Each Party confirms that the enforcement procedures set forth in Article 20.J.4 (Civil and

Administrative Procedures and Remedies), Article 20.J.5 (Provisional Measures), and Article

20.J.7 (Criminal Procedures and Penalties) shall be available to the same extent with respect to

80   For greater certainty, a Party may provide that the determination of damages is carried out after the determination of misappropriation.

81  For greater certainty, and subject to Article 44 of the TRIPS Agreement and the provisions of this Agreement, each Party confirms that it makes such remedies available with respect to enterprises, regardless of whether the enterprises are private or state-owned.

acts of trademark infringement, as well as copyright or related rights infringement, in the digital environment.

  1. Each Party shall ensure that its procedures concerning the enforcement of intellectual property rights are fair and equitable. These procedures shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
  1. This Section does not create any obligation:

(a)       to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of each Party to enforce its law in general; or

(b)       with  respect  to  the  distribution  of  resources  as  between  the  enforcement  of intellectual property rights and the enforcement of law in general.

  1. In implementing the provisions of this Section in its intellectual property system, each Party shall take into account the need for proportionality between the seriousness of the infringement of the intellectual property right and the applicable remedies and penalties, as well as the interests of third parties.

Article 20.J.2:  Presumptions

  1. In civil, criminal, and, if applicable, administrative proceedings involving copyright or related rights, each Party shall provide for a presumption82 that, in the absence of proof to the contrary:

(a)       the person whose name is indicated in the usual manner83 as the author, performer or producer of the work, performance or phonogram, or if applicable the publisher, is the designated right holder in that work, performance or phonogram; and

(b)       the copyright or related right subsists in such subject matter.

  1. In connection with the commencement of a civil, administrative, or criminal enforcement proceeding involving a registered trademark that has been substantively examined by its competent authority, each Party shall provide that the trademark be considered prima facie valid.

82   For greater certainty, a Party may implement this Article on the basis of sworn statements or documents having evidentiary value, such as statutory declarations.  A Party may also provide that these presumptions are rebuttable presumptions that may be rebutted by evidence to the contrary.

83    For greater certainty, a Party may establish the means by which it shall determine what constitutes the “usual manner” for a particular physical support.

  1. In connection with the commencement of a civil or administrative enforcement proceeding involving a patent that has been substantively examined and granted by the competent authority of a Party, that Party shall provide that each claim in the patent be considered prima facie to satisfy the applicable criteria of patentability in the territory of the Party.84,85

Article 20.J.3:  Enforcement Practices with Respect to Intellectual Property Rights

  1. Each Party shall provide that final judicial decisions and administrative rulings of general application pertaining to the enforcement of intellectual property rights:

(a)       are in writing and preferably state any relevant findings of fact and the reasoning or the legal basis on which the decisions and rulings are based; and

(b)       are published86 or, if publication is not practicable, otherwise made available to the public in a national language in such a manner as to enable interested persons and Parties to become acquainted with them.

  1. Each Party recognizes the importance of collecting and analyzing statistical data and other relevant information concerning infringements of intellectual property rights as well as collecting information on best practices to prevent and combat infringements.
  1. Each Party shall publish or otherwise make available to the public information on its efforts to provide effective enforcement of intellectual property rights in its civil, administrative and criminal systems, such as statistical information that the Party may collect for such purposes.

Article 20.J.4:  Civil and Administrative Procedures and Remedies

  1. Each Party shall make available to right holders civil judicial procedures concerning the enforcement of any intellectual property right covered in this Chapter.87

84  For greater certainty, if a Party provides its administrative authorities with the exclusive authority to determine the validity of a registered trademark or patent, nothing in paragraphs 2 and 3 shall prevent that Party’s competent authority from suspending enforcement procedures until the validity of the registered trademark or patent is determined by the administrative authority.  In those validity procedures, the party challenging the validity of the registered trademark or patent shall be required to prove that the registered trademark or patent is not valid. Notwithstanding this requirement, a Party may require the trademark holder to provide evidence of first use.

85  A Party may provide that this paragraph applies only to those patents that have been applied for, examined and granted after the entry into force of this Agreement for that Party.

86  For greater certainty, a Party may satisfy the requirement for publication by making the decision or ruling available to the public on the Internet.

87   For the purposes of this Article, the term “right holders” shall include those authorized licensees, federations and associations that have the legal standing and authority to assert such rights.  The term “authorized licensee” shall

  1. Each Party shall provide that its judicial authorities have the authority to order injunctive relief that conforms to Article 44 of the TRIPS Agreement, including to prevent goods that involve the infringement of an intellectual property right under the law of the Party providing that relief from entering into the channels of commerce.
  1. Each Party shall provide88 that, in civil judicial proceedings, its judicial authorities have the authority at least to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.
  1. In determining the amount of damages under paragraph 3, each Party’s judicial authorities shall have the authority to consider, among other things, any legitimate measure of value the right holder submits, which may include lost profits, the value of the infringed goods or services measured by the market price, or the suggested retail price.
  1. At least in cases of copyright or related rights infringement and trademark counterfeiting, each Party shall provide that, in civil judicial proceedings, its judicial authorities have the authority to order the infringer, at least in cases described in paragraph 3, to pay the right holder the infringer’s profits that are attributable to the infringement.89
  1. In civil judicial proceedings with respect to the infringement of copyright or related rights protecting works, phonograms or performances, each Party shall establish or maintain a system that provides for one or more of the following:

(a)        pre-established damages, which shall be available on the election of the right holder; or

(b)       additional damages.90

  1. In civil judicial proceedings with respect to trademark counterfeiting, each Party shall also establish or maintain a system that provides for one or more of the following:

include the exclusive licensee of any one or more of the exclusive intellectual property rights encompassed in a given intellectual property.

88  A Party may also provide that the right holder may not be entitled to any of the remedies set out in paragraphs 3, 5, and 7 if there is a finding of non-use of a trademark. For greater certainty, there is no obligation for a Party to provide for the possibility of any of the remedies in paragraphs 3, 5, 6, and 7 to be ordered in parallel.

89  A Party may comply with this paragraph through presuming those profits to be the damages referred to in paragraph

3.

90   For greater certainty, additional damages may include exemplary or punitive damages.

(a)        pre-established damages, which shall be available on the election of the right holder; or

(b)       additional damages.91

  1. Pre-established damages under paragraphs 6 and 7 shall be in an amount sufficient to constitute a deterrent to future infringements and to compensate fully the right holder for the harm caused by the infringement.
  1. In awarding additional damages under paragraphs 6 and 7, judicial authorities shall have the authority to award such additional damages as they consider appropriate, having regard to all relevant matters, including the nature of the infringing conduct and the need to deter similar infringements in the future.
  1. Each Party shall provide that its judicial authorities, if appropriate, have the authority to order, at the conclusion of civil judicial proceedings concerning infringement of at least copyright or related rights, patents, and trademarks, that the prevailing party be awarded payment by the losing party of court costs or fees and appropriate attorney’s fees, or any other expenses as provided for under the Party’s law.
  1. 1 If a Party’s judicial or other authorities appoint a technical or other expert in a civil proceeding concerning the enforcement of an intellectual property right and require that the parties to the proceeding pay the costs of that expert, that Party should seek to ensure that those costs are reasonable and related appropriately, among other things, to the quantity and nature of work to be performed and do not unreasonably deter recourse to such proceedings.
  1. Each Party shall provide that in civil judicial proceedings:

(a)       at least with respect to pirated copyright goods and counterfeit trademark goods, its judicial authorities have the authority, at the right holder’s request, to order that the infringing goods be destroyed, except in exceptional circumstances, without compensation of any sort;

(b)       its judicial authorities have the authority to order that materials and implements that have been used in the manufacture or creation of the infringing goods be, without compensation of any sort, promptly destroyed or, in exceptional circumstances, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to minimize the risk of further infringement; and

(c)       in regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed is not sufficient, other than in exceptional circumstances, to permit the release of goods into the channels of commerce.

91   For greater certainty, additional damages may include exemplary or punitive damages.

  1. Without prejudice to its law governing privilege, the protection of confidentiality of information sources or the processing of personal data, each Party shall provide that, in civil judicial proceedings concerning the enforcement of an intellectual property right, its judicial authorities have the authority, on a justified request of the right holder, to order the infringer or the alleged infringer, as applicable, to provide to the right holder or to the judicial authorities, at least for the purpose of collecting evidence, relevant information as provided for in its applicable laws and regulations that the infringer or alleged infringer possesses or controls. The information may include information regarding any person involved in any aspect of the infringement or alleged infringement and the means of production or the channels of distribution of the infringing or allegedly infringing goods or services, including the identification of third persons alleged to be involved in the production and distribution of the goods or services and of their channels of distribution.
  1. In cases in which a party in a proceeding voluntarily and without good reason refuses access to, or otherwise does not provide relevant evidence under that party’s control within a reasonable period, or significantly impedes a proceeding relating to an enforcement action, each Party shall provide that its judicial authorities shall have the authority to make preliminary and final determinations, affirmative or negative, on the basis of the evidence presented, including the complaint or the allegation presented by the party adversely affected by the denial of access to evidence, subject to providing the parties an opportunity to be heard on the allegations or evidence.
  1. Each Party shall ensure that its judicial authorities have the authority to order a party at whose request measures were taken and that has abused enforcement procedures to provide to a party wrongfully enjoined or restrained adequate compensation for the injury suffered because of that abuse. The judicial authorities shall also have the authority to order the applicant to pay the defendant expenses, which may include appropriate attorney’s fees.
  1. Each Party shall provide that in relation to a civil judicial proceeding concerning the enforcement of an intellectual property right, its judicial or other authorities have the authority to impose sanctions on a party, counsel, experts or other persons subject to the court’s jurisdiction for violation of judicial orders concerning the protection of confidential information produced or exchanged in that proceeding.
  1. To the extent that any civil remedy can be ordered as a result of administrative procedures on the merits of a case, each Party shall provide that those procedures conform to principles equivalent in substance to those set out in this Article.
  1. In civil judicial proceedings concerning the acts described in Article 20.H.11 (TPMs) and

Article 20.H.12 (RMI):

(a)       each Party shall provide that its judicial authorities have the authority at least to:92

(i)        impose provisional measures, including seizure or other taking into custody of devices and products suspected of being involved in the prohibited activity;

(ii)       order the type of damages available for copyright infringement, as provided under its law in accordance with this Article;

(iii)     order court costs, fees or expenses as provided for under paragraph 9; and

(iv)      order the destruction of devices and products found to be involved in the prohibited activity; and

(b)       a Party may provide that damages shall not be available against a non-profit library, museum, archive, educational institution, or public non-commercial broadcasting entity, if it sustains the burden of proving that it was not aware or had no reason to believe that its acts constituted a prohibited activity.

Article 20.J.5:  Provisional Measures

  1. Each Party’s authorities shall act on a request for relief in respect of an intellectual property right inaudita altera parte expeditiously in accordance with that Party’s judicial rules.
  1. Each Party shall provide that its judicial authorities have the authority to require the applicant for a provisional measure in respect of an intellectual property right to provide any reasonably available evidence in order to satisfy the judicial authority, with a sufficient degree of certainty, that the applicant’s right is being infringed or that the infringement is imminent, and to order the applicant to provide security or equivalent assurance set at a level sufficient to protect the defendant and to prevent abuse. Such security or equivalent assurance shall not unreasonably deter recourse to those procedures.
  1. In civil judicial proceedings concerning copyright or related rights infringement and trademark counterfeiting, each Party shall provide that its judicial authorities have the authority to order the seizure or other taking into custody of suspected infringing goods, materials, and implements relevant to the infringement, and, at least for trademark counterfeiting, documentary evidence relevant to the infringement.

92  For greater certainty, a Party may, but is not required to, put in place separate remedies in respect of Article 20.H.11 (TPMs) and 20.H.12 (RMI), if those remedies are available under its copyright law.

Article 20.J.6:  Special Requirements related to Border Measures

  1. Each Party shall provide for applications to suspend the release of, or to detain, any suspected counterfeit or confusingly similar trademark or pirated copyright goods that are imported into the territory of the Party.93
  1. Each Party shall provide that any right holder initiating procedures for its competent authorities94 to  act  under paragraph 1  to  suspend  release  into  free  circulation  of  suspected counterfeit or confusingly similar trademark or pirated copyright goods is required:

(a)        to provide adequate evidence to satisfy the competent authorities that, under the law of the Party providing the procedures, there is prima facie an infringement of the right holder’s intellectual property right; and

(b)        to supply sufficient information that may reasonably be expected to be within the right holder’s knowledge to make the suspect goods reasonably recognizable by its competent authorities.

The requirement to provide that information shall not unreasonably deter recourse to these procedures.

  1. Each Party shall provide that its competent authorities have the authority to require a right holder initiating procedures to suspend the release of suspected counterfeit or confusingly similar trademark or pirated copyright goods, to provide a reasonable security or equivalent assurance sufficient to protect the defendant and the competent authorities, and to prevent abuse. Each Party shall provide that such security or equivalent assurance does not unreasonably deter recourse to these procedures. A Party may provide that the security may be in the form of a bond conditioned to hold the defendant harmless from any loss or damage resulting from any suspension of the release of goods in the event the competent authorities determine that the article is not an infringing good.

93   For the purposes of this Article:

(a)         counterfeit  trademark  goods  means  any  goods,  including  packaging,  bearing  without  authorization  a trademark that is identical to the trademark validly registered in respect of such goods, or that cannot be distinguished in its essential aspects from such a trademark, and that thereby infringes the rights of the owner of the trademark in question under the law of the Party providing the procedures under this Section; and

(b)         pirated copyright goods means any goods that are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and that are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the Party providing the procedures under this Section.

94    For the purposes of this Article, unless otherwise specified, competent authorities may include the appropriate judicial, administrative or law enforcement authorities under a Party’s law.

  1. Without prejudice  to  a  Party’s  law  pertaining  to  privacy  or  the  confidentiality  of information:

(a)        if a Party’s competent authorities have detained or suspended the release of goods that are suspected of being counterfeit trademark or pirated copyright goods, that Party may provide that its competent authorities have the authority to inform the right holder without undue delay of the names and addresses of the consignor, exporter, consignee or importer; a description of the goods; the quantity of the goods; and, if known, the country of origin of the goods;95 or

(b)        if a Party does not provide its competent authority with the authority referred to in subparagraph (a) when suspect goods are detained or suspended from release, it shall provide, at least in cases of imported goods, its competent authorities with the authority to provide the information specified in subparagraph (a) to the right holder normally within 30 working days of the seizure or determination that the goods are counterfeit trademark goods or pirated copyright goods.

  1. Each Party shall provide that its competent authorities may initiate border measures ex officio against suspected counterfeit trademark goods or pirated copyright goods under customs control96 that are:

(a)       imported;

(b)       destined for export; (c)       in transit;97 and

(d)       admitted into or exiting from a free trade zone or a bonded warehouse.

  1. Nothing in this Article precludes a Party from exchanging, if appropriate and with a view to eliminating international trade in counterfeit trademarked goods or pirated copyrighted goods, available information to another Party in respect of goods that it has examined without a local consignee and that are transshipped through its territory and are destined for the territory of the other Party, to inform that other Party’s efforts to identify suspect goods upon arrival in its territory.
  1. Each Party shall adopt or maintain a procedure by which its competent authorities may determine within a reasonable period of time after the initiation of the procedures described in

95   For greater certainty, a Party may establish reasonable procedures to receive or access that information.

96   For the purposes of this Article, “goods under customs control” means goods that are subject to a Party’s customs procedures.

97  For the purposes of this Article, an “in-transit” good means a good that is under “Customs transit” or “transshipped,” as defined in the International Convention on the Simplification and Harmonization of Customs Procedures as amended (Revised Kyoto Convention).

paragraph 1, paragraph 5(a), paragraph 5(b), paragraph 5(c), and paragraph 5(d), whether the suspect goods infringe an intellectual property right. If a Party provides administrative procedures for the determination of an infringement, it may also provide its authorities with the authority to impose administrative penalties or sanctions, which may include fines or the seizure of the infringing goods following a determination that the goods are infringing.

  1. Each Party shall provide that its competent authorities have the authority to order the destruction of goods following a determination that the goods are infringing. In cases in which the goods are not destroyed, each Party shall ensure that, except in exceptional circumstances, the goods are disposed of outside the channels of commerce in such a manner as to avoid any harm to the right holder.  In regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit the release of the goods into the channels of commerce.
  1. If a Party establishes or assesses, in connection with the procedures described in this Article, an application fee, storage fee, or destruction fee, that fee shall not be set at an amount that unreasonably deters recourse to these procedures.
  1. This Article applies to goods of a commercial nature sent in small consignments. A Party may exclude from the application of this Article small quantities of goods of a non-commercial nature contained in travelers’ personal luggage.98

Article 20.J.7:  Criminal Procedures and Penalties

  1. Each Party shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright or related rights piracy on a commercial scale. In respect of willful copyright or related rights piracy, “on a commercial scale” includes:

(a)       acts carried out for commercial advantage or financial gain; and

(b)        significant acts, not carried out for commercial advantage or financial gain, that have a substantial prejudicial impact on the interests of the copyright or related rights holder in relation to the marketplace.99, 100

98   For greater certainty, a Party may also exclude from the application of this Article small quantities of goods of a non-commercial nature sent in small consignments.

99   The Parties understand that a Party may comply with subparagraph (b) by addressing such significant acts under its criminal procedures and penalties for non-authorized uses of protected works, performances and phonograms in its law.

100  A Party may provide that the volume and value of any infringing items may be taken into account in determining whether the act has a substantial prejudicial impact on the interests of the copyright or related rights holder in relation to the marketplace.

  1. Each Party shall treat willful importation or exportation of counterfeit trademark goods or pirated copyright goods on a commercial scale as unlawful activities subject to criminal penalties.101
  1. Each Party shall provide for criminal procedures and penalties to be applied in cases of willful importation102 and domestic use, in the course of trade and on a commercial scale, of a label or packaging:

(a)        to which a trademark has been applied without authorization that is identical to, or cannot be distinguished from a trademark registered in its territory; and

(b)        that is intended to be used in the course of trade on goods or in relation to services that are identical to goods or services for which that trademark is registered.

  1. Each Party shall provide for criminal procedures to be applied against any person who, willfully and without the authorization of the  holder103  of copyright or related rights   in a cinematographic work, knowingly uses or attempts to use an audiovisual recording device to transmit or make a copy of the cinematographic work or any part thereof, from a performance of the motion picture or other audiovisual work in a movie theater or other venue that is being used primarily for the exhibition of a copyrighted motion picture. In addition to the criminal procedures, a Party may provide for administrative enforcement procedures.
  1. With respect to the offenses for which this Article requires a Party to provide for criminal procedures and penalties, each Party shall ensure that criminal liability for aiding and abetting is available under its law.
  1. With respect to the offenses described in paragraphs 1 through 5, each Party shall provide that:

101    The Parties understand that a Party may comply with its obligation under this paragraph by providing that distribution or sale of counterfeit trademark goods or pirated copyright goods on a commercial scale is an unlawful activity subject to criminal penalties.  The Parties understand that criminal procedures and penalties as specified in paragraphs 1, 2, and 3 are applicable in any free trade zones in a Party.

102    A Party may comply with its obligation relating to importation of labels or packaging through its measures concerning distribution.

103     For greater certainty, the theater or venue owner or operator shall be entitled to contact the criminal law enforcement authorities with respect to the suspected commission of the acts referred to in this provision. For greater certainty, nothing in this paragraph expands or diminishes the existing rights and obligations of a theater or venue owner or operator with respect to the cinematographic work.

(a)       Penalties  that  include  sentences  of  imprisonment  as  well  as  monetary  fines sufficiently high to provide a deterrent to future acts of infringement, consistent with the level of penalties applied for crimes of a corresponding gravity;104

(b)       Its judicial authorities have the authority, in determining penalties, to account for the seriousness of the circumstances, which may include circumstances that involve threats to, or effects on, health or safety;105

(c)        Its judicial or other competent authorities have the authority to order the seizure of suspected counterfeit trademark goods or pirated copyright goods, any related materials and implements used in the commission of the alleged offense, documentary evidence relevant to the alleged offense and assets derived from, or obtained through the alleged infringing activity.  If a Party requires identification of items subject to seizure as a prerequisite for issuing a judicial order referred to in this subparagraph, that Party shall not require the items to be described in greater detail than necessary to identify them for the purpose of seizure;

(d)       Its judicial authorities have the authority to order the forfeiture, at least for serious offenses, of any assets derived from or obtained through the infringing activity;

(e)        Its judicial authorities have the authority to order the forfeiture or destruction of: (i)        all counterfeit trademark goods or pirated copyright goods,

(ii)        materials and implements that have been predominantly used in the creation of pirated copyright goods or counterfeit trademark goods, and

(iii)       any other labels or packaging to which a counterfeit trademark has been applied and that have been used in the commission of the offense.

In cases in which counterfeit trademark goods and pirated copyright goods are not destroyed, the judicial or other competent authorities shall ensure that, except in exceptional circumstances, those goods are disposed of outside the channels of commerce in such a manner as to avoid causing any harm to the right holder. Each Party shall further provide that forfeiture or destruction under this subparagraph and subparagraph (c) shall occur without compensation of any kind to the defendant;

104   The Parties understand that there is no obligation for a Party to provide for the possibility of imprisonment and monetary fines to be imposed in parallel.

105  A Party may also account for such circumstances through a separate criminal offense.

(f)        Its judicial or other competent authorities have the authority to release or, in the alternative, provide access to, goods, material, implements, and other evidence held by the relevant authority to a right holder for civil106 infringement proceedings; and

(g)        Its competent authorities may act upon their own initiative to initiate legal action without the need for a formal complaint by a third person or right holder.

  1. With respect to the offenses described in paragraphs 1 through 5, a Party may provide that its judicial authorities have the authority to order the seizure or forfeiture of assets, or alternatively, a fine, the value of which corresponds to the assets derived from, or obtained directly or indirectly through, the infringing activity.

Article 20.J.8:  Protection of Encrypted Program-Carrying Satellite and Cable Signals

  1. Each Party shall make it a criminal offense to:

(a)       manufacture, assemble107, modify, import, export,108 sell, or otherwise distribute a tangible or intangible device or system knowing or having reason to know109 that the device or system meets at least one of the following conditions:

(i)        it is intended to be used to assist, or

(ii)       it is primarily of assistance,

in   decoding   an   encrypted   program-carrying   satellite   signal   without   the authorization of the lawful distributor110 of such signal111; and

106  A Party may also provide this authority in connection with administrative infringement proceedings.

107   For greater certainty, a Party may treat “assemble” as incorporated in “manufacture.”

108  The obligation regarding export may be met by making it a criminal offense to possess and distribute a device or system described in this paragraph.

109   For the purposes of this paragraph, a Party may provide that “having a reason to know” may be demonstrated through reasonable evidence, taking into account the fact and circumstances surrounding the alleged illegal act, as part of the Party’s “knowledge” requirements. A Party may treat “having reason to know” as meaning “willful negligence”.

110     With regard to the criminal offenses and penalties in paragraph 1 and paragraph 3, a Party may require a demonstration of intent to avoid payment to the lawful distributor, or a demonstration of intent to otherwise secure a pecuniary benefit to which the recipient is not entitled.

111  For the purposes of this Article, a Party may provide that a “lawful distributor” means a person that has the lawful right in that Party’s territory to distribute the encrypted program carrying signal and authorize its decoding.

(b)                    with respect to an encrypted program-carrying satellite signal, willfully: (i)            receive112 such a signal, or

(ii)       further distribute113 such signal,

knowing that it has been decoded without the authorization of the lawful distributor of the signal.

  1. Each Party shall provide for civil remedies for a person that holds an interest in an encrypted program-carrying satellite signal or its content and that is injured by an activity described in paragraph 1.
  1. Each Party shall provide for criminal penalties and civil114 remedies for willfully:

(a)       manufacturing or distributing equipment knowing that the equipment is intended to be used in the unauthorized reception of any encrypted program-carrying cable signal; and

(b)       receiving, or assisting another to receive115, an encrypted program-carrying cable signal without authorization of the lawful distributor of the signal.

Article 20.J.9:  Government Use of Software

  1. Each Party recognizes the importance of promoting the adoption of measures to enhance government awareness of respect for intellectual property rights and of the detrimental effects of the infringement of intellectual property rights.
  1. Each Party shall adopt or maintain appropriate laws, regulations, policies, orders, government-issued guidelines, or administrative or executive decrees that provide that its central government agencies use only non-infringing computer software protected by copyright and related rights, and, if applicable, only use that computer software in a manner authorized by the

112   For greater certainty and for the purposes of paragraph 1(b) and paragraph 3(b), a Party may provide that willful receipt of an encrypted program carrying satellite or cable signal means receipt and use of the signal, or means receipt and decoding of the signal.

113   For greater certainty, a Party may interpret “further distribute” as “retransmit to the public”.

114   If a Party provides for civil remedies, it may require a demonstration of injury.

115   A Party may comply with its obligation in respect of “assisting another to receive” by providing for criminal penalties to be available against a person willfully publishing any information in order to enable or assist another person to receive a signal without authorization of the lawful distributor of the signal.

relevant license.  These measures apply to the acquisition and management of the software for government use.

Article 20.J.10:  Internet Service Providers

  1. For the purpose of Article 20.J.11 (Legal Remedies and Safe Harbors), an Internet Service

Provider is:

(a)        a provider of services for the transmission, routing, or providing of connections for  digital online communications without modification of their content, between or among  points specified by a user, of material of the user’s choosing, undertaking the function in  Article 20.J.11.2 (a) (Legal Remedies and Safe Harbors); or

(b)       a provider of online services undertaking the functions in Article 20.J.11.2 (b), Article 20.J.11.2  (c), or Article 20.J.11.2 (d) (Legal Remedies and Safe Harbors).

  1. For the purposes of Article 20.J.11 (Legal Remedies and Safe Harbors), the term copyright includes related rights.

Article 20.J.11: Legal Remedies and Safe Harbors116

  1. The Parties recognize the importance of facilitating the continued development of legitimate online services operating as intermediaries and, in a manner consistent with  Article

41 of the TRIPS Agreement, providing enforcement procedures that permit  effective  and expeditious  action  by  right  holders  against  copyright  infringement covered under this Chapter that occurs in the online environment. Accordingly, each Party shall ensure that legal remedies are available for right holders to address such  copyright infringement and shall establish or maintain appropriate safe harbors in  respect of online services that are Internet Service Providers. This framework of legal  remedies and safe harbors shall include:

(a)        legal incentives for Internet Service Providers to cooperate with copyright owners to deter the unauthorized storage and transmission of copyrighted materials or, in the alternative, to take other action to deter the unauthorized storage and transmission of copyrighted materials; and

(b)       limitations in its law that have the effect of precluding monetary relief against Internet Service Providers for copyright infringements that they do not control, initiate or direct, and that take place through systems or networks controlled or operated by them or on their behalf.

116  Annex 20-A applies to Article 20.J.11.3 and Article 20.J.11.4.

  1. The limitations described in paragraph 1(b)) shall include limitations in respect of the following functions:

(a)        transmitting, routing or providing connections for material without modification of its content or the intermediate and transient storage of that material done automatically in the course of such a technical process;117

(b)       caching carried out through an automated process;

(c)        storage, at the direction of a user, of material residing on a system or network controlled or operated by or for the Internet Service Provider; and

(d)       referring or linking users to an online location by using information location tools, including hyperlinks and directories.

  1. To facilitate effective action to address infringement, each Party shall prescribe in its law conditions for Internet Service Providers to qualify for the limitations described in paragraph 1(b), or, alternatively, shall provide for circumstances under which Internet Service Providers do not qualify for the limitations described in paragraph 1(b):118

(a)        With respect to the functions referred to in paragraph 2(c) and paragraph 2(d), these conditions shall include a requirement for Internet Service Providers to expeditiously remove or disable access to material residing on their networks or systems upon obtaining actual knowledge of the copyright infringement or becoming aware of facts or circumstances from which the infringement is apparent, such as through receiving a notice119 of alleged infringement from the right holder or  a person authorized to act on its behalf,

(b)        An Internet Service Provider that removes or disables access to material in good faith under subparagraph (a) shall be exempt from any liability for having done so,

117  The Parties understand that these limitations shall apply only where the Internet Service Provider does not initiate the chain of transmission of the materials, and does not select the material or its recipients.

118   The Parties understand that a Party that has yet to implement the obligations in paragraphs 3 and 4 will do so in a manner that is both effective and consistent with that Party’s existing constitutional provisions.  To that end, a Party may establish an appropriate role for the government that does not impair the timeliness of the process provided in paragraphs 3 and 4, and does not entail advance government review of each individual notice.

119     For greater certainty, a notice of alleged infringement, as may be set out under a Party’s law, must contain information that:

(a)           is reasonably sufficient to enable the Internet Service Provider to identify the work, performance or phonogram claimed to be infringed, the alleged infringing material, and the online location of the alleged infringement; and

(b)         has a sufficient indicia of reliability with respect to the authority of the person sending the notice.

provided that it takes reasonable steps in advance or promptly after to notify the person whose material is removed or disabled.120

  1. For purposes of the functions referred to in subparagraphs 2(c) and 2(d), each Party shall establish appropriate procedures in its law or in regulations for effective notices of claimed  infringement, and effective counter-notices by those whose material is removed or disabled  through mistake or misidentification. If material has been removed or access has been disabled in  accordance with paragraph 3, that Party shall require that the Internet Service Provider restores the  material that is the subject of a counter-notice, unless the person giving the original notice seeks  relief through civil judicial proceedings within a reasonable period of time as set forth in that Party’s law or regulations.
  1. Each Party shall ensure that monetary remedies are available in its legal system against any person that makes a knowing material misrepresentation in a notice or counter-notice that causes injury to any interested party121  as a result of an  Internet Service Provider relying on the misrepresentation.
  1. 6. Eligibility for the limitations in paragraph 1 shall be conditioned on the service provider:

(a)        adopting and reasonably implementing a policy that provides for termination in appropriate circumstances of the accounts of repeat infringers;

(b)        accommodating and not interfering with standard technical measures accepted in the Party’s territory that protect and identify copyrighted material, that are developed through an open, voluntary process by a broad consensus of copyright owners          and   service   providers,   that   are   available   on   reasonable   and nondiscriminatory  terms,  and that do not impose  substantial costs on  service providers or substantial burdens on their systems or networks; and

(c)        with respect to the functions identified in 2(c) and 2(d), not receiving a financial benefit directly attributable to the infringing activity, in circumstances where it has the right and ability to control such activity.

  1. Eligibility for the limitations in paragraph 1 shall not be conditioned on the Internet Service Provider monitoring its service or affirmatively seeking facts indicating infringing activity, except to the extent consistent with the technical measures identified in paragraph 6(b).

120   With respect to the function in subparagraph 2(b), a Party may limit the requirements of paragraph 3 related to an  Internet Service Provider removing or disabling access to material to circumstances in which the Internet Service  Provider becomes aware or receives notification that the cached material has been removed or access to it has been  disabled at the originating site.

121   For greater certainty, the Parties understand that, “any interested party” may be limited to those with a legal interest recognized under that Party’s law.

  1. Each Party shall provide procedures, whether judicial or administrative, in accordance with that Party’s legal system, and consistent with principles of due process and privacy, that enable a copyright owner that has made a legally sufficient claim of copyright infringement to obtain expeditiously from an Internet Service Provider information in the provider’s possession identifying the alleged infringer, in cases in which that information is sought for the purpose

of  protecting or enforcing that copyright.

  1. 9. The Parties understand that the failure of an Internet Service Provider to qualify for the limitations in paragraph 1(b) does not itself result in liability. Further, this Article is without  prejudice to the availability of other limitations and exceptions to copyright, or any other defenses  under a Party’s legal system.
  1. The Parties recognize the importance, in implementing their obligations under this

Article, of taking into account the impact on the right holders and Internet Service Providers.

Section K: Final Provisions

Article 20.K.1:  Final Provisions

  1. Except as otherwise provided in Article 20.A.10 (Application of Chapter to Existing Subject Matter and Prior Acts) and paragraphs 2 and 3, each Party shall give effect to the provisions of this Chapter on the date of entry into force of this Agreement for that Party.
  1. During the relevant periods set out below, a Party shall not amend an existing measure or adopt a new measure that is less consistent with its obligations under the Articles referred to below for that Party than relevant measures that are in effect on the date of signature of this Agreement.
  1. With regard to obligations subject to a transition period, Mexico shall fully implement its obligations under the provisions of this Chapter no later than the expiration of the relevant time period specified below, which begins on the date of entry into force of this Agreement.

(a)       Article 20.A.7 (International Agreements), UPOV 1991, four years;

(b)       Article 20.F.10 (Protection of Undisclosed Test or Other Data for Agricultural

Chemical Products), five years;

(c)       Article 20.F.11 (Patent Term Adjustment for Unreasonable Curtailment), 4.5 years;

(d)       Article 20.F.13 (Protection of Undisclosed Test or Other Data), five years;

(e)       Article 20.F.14 (Biologics), five years;

(f)        Article 20.I.1 (Civil Protection and Enforcement), Article 20.I.4 (Provisional

Measures) and Article 20.I.6 (Civil Remedies), five years; and

(g)       Articles 20.J.10 (Internet Service Providers) and 20.J.11 (Legal Remedies and

Safe Harbors), three years.

  1. With regard to obligations subject to a transition period, Canada shall fully implement its obligations under the provisions of this Chapter no later than the expiration of the relevant time period specified below, which begins on the date of entry into force of this Agreement.

(a)          Article 20.A.7.2(f) (International Agreements), four years;

(b)          Article  20.F.9  (Patent  Term Adjustment  for  Unreasonable  Granting Authority

Delays), 4.5 years;

(c)          Article 20.F.14 (Biologics), five years; and

(d)          Article 20.H.7(a) (Term of Protection for Copyright and Related Rights), 2.5 years.

Annex to Section J

  1. In order to facilitate the enforcement of copyright on the Internet and to avoid unwarranted market disruption in the online environment, Article 20.J.11.3, Article 20.J.11.4, and Article

20.J.11.6 (Legal Remedies and Safe Harbours) shall not apply to a Party provided that, as from the date of agreement in principle of this Agreement, it continues to:

(a)    prescribe in its law circumstances under which Internet Service Providers do not qualify for the limitations described in Article 20.J.11.1(b) (Legal Remedies and Safe Harbours);

(b)    provide statutory secondary liability for copyright infringement in cases in which a person,  by means  of  the  Internet or  another  digital  network,  provides  a  service primarily for the purpose of enabling acts of copyright infringement, in relation to factors set out in its law, such as:

(i)            whether the person marketed or promoted the service as one that could be used to enable acts of copyright infringement;

(ii)       whether the person had knowledge that the service was used to enable a significant number of acts of copyright infringement;

(iii)     whether the service has significant uses other than to enable acts of copyright infringement;

(iv)     the person’s ability, as part of providing the service, to limit acts of copyright infringement, and any action taken by the person to do so;

(v)      any benefits the person received as a result of enabling the acts of copyright infringement; and

(vi)      the economic viability of the service if it were not used to enable acts of copyright infringement;

(c)    require Internet Service Providers carrying out the functions referred to in Article

20.J.11.2(a) and (c) (Legal Remedies and Safe Harbours) to participate in a system for forwarding notices of alleged infringement, including if material is made available online, and if the Internet Service Provider fails to do so, subjecting that provider to pre-established monetary damages for that failure;

(d)  induce Internet Service Providers offering information location tools to remove within a specified period of time any reproductions of material that they make, and communicate to the public, as part of offering the information location tool upon receiving a notice of alleged infringement and after the original material has been removed from the electronic location set out in the notice; and

(e)    induce Internet Service Providers carrying out the function referred to in Article

20.J.11.2(c) (Legal Remedies and Safe Harbours) to remove or disable access to material upon becoming aware of a decision of a court of that Party to the effect that the person storing the material infringes copyright in the material.

  1. For a Party to which Article 20.J.11.3, Article 20.J.11.4, and Article 20.J.11.6 (Legal Remedies and Safe Harbours) do not apply pursuant to paragraph 1 of this Annex, and in light of, among other things, paragraph 1(b) of this Annex, for the purposes of Article 20.J.11.1(a), legal incentives shall not mean the conditions for Internet Service Providers to qualify for the limitations provided for in Article 20.J.11.1(b), as set out in Article 20.J.11.3.
  1. Pursuant to paragraph 1, for a Party to which Article 20.J.11.3, Article 20.J.11.4, and Article

20.J.11.6 (Legal Remedies and Safe Harbours) do not apply:

(a)   the term “modification” in paragraphs 20.J.10.1(a) and 20.J.11.2(a) does not include modifications made for solely technical reasons such as division into packets;

(b)  with regard to paragraph 20.J.11.7, “except to the extent consistent with the technical measures identified in paragraph 6(b)” does not apply.

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