[Federal Register Volume 59, Number 114 (Wednesday, June 15, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-14520]
[[Page Unknown]]
[Federal Register: June 15, 1994]
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AGENCY FOR INTERNATIONAL DEVELOPMENT
Patent and Trademark Office
Extension of Existing Interim Orders Granting Protection Under
the Semiconductor Chip Protection Act of 1984 for Nationals,
Domiciliaries and Sovereign Authorities of Certain Countries To Which
Interim Protection Has Been Extended
agency: Patent and Trademark Office, Commerce.
action: Notice.
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summary: Pursuant to section 914 of the Semiconductor Chip Protection
Act of 1984 (SCPA), 17 U.S.C. 914, and the guidelines issued by the
Patent and Trademark Office, 49 FR 44517 (Nov. 7, 1984), the Assistant
Secretary of Commerce and Commissioner of Patents and Trademarks has
determined that existing interim orders under which protection under
the SCPA is made available to foreign mask work owners should be
extended in duration for nationals, domiciliaries and sovereign
authorities of Japan, Sweden, Australia, the Member States of the
European Community, Canada, Switzerland, Finland, and Austria under
section 914 of the SCPA.
effective date: This order is effective on June 30, 1994.
termination date: This order will terminate on July 1, 1995.
addresses: Address correspondence to Michael S. Keplinger, Office of
Legislative and International Affairs, United States Patent and
Trademark Office, Box 4, Washington, DC 20231.
for further information contact: Michael S. Keplinger, Office of
Legislative and International Affairs, United States Patent and
Trademark Office, Box 4, Washington, DC 20231, phone (703) 305-9300.
supplementary information: When Congress enacted the Semiconductor Chip
Protection Act of 1984 (SCPA), it established an entirely new category
of intellectual property that did not fall under the Paris Convention
for the Protection of Industrial Property, the Universal Copyright
Convention of the Berne Convention for the Protection of Literary and
Artistic Works. The Congress created a balanced intellectual property
regime for the protection of layout-designs of semiconductor chips that
provided a level of protection that was satisfactory to meet the needs
of the U.S. public and the domestic semiconductor chip industry. At the
same time, Congress was also aware of the need of U.S. chip producers
for protection in foreign markets, of the need of foreign chip
producers for protection here in the United States and that there was
no international treaty for the protection of chips. Faced with this
dilemma, Congress created an innovative mechanism to encourage the
rapid building of a worldwide consensus on an appropriate regime of
intellectual property protection for chip layout-designs that would be
compatible with U.S. law and would encourage the development of the
international market for semiconductor chip products. To achieve these
goals, Congress established a two-tiered system for protecting foreign
works in the United States. Section 914 of the CPA permits the
Secretary of Commerce to extend interim access to protection under the
CPA for foreign chip creators if certain criteria are met, and section
902 permits the President to proclaim indefinite access to protection
under the SCPA for foreign creators from countries that protect U.S.
works. This system has laid the groundwork for establishing a
technology-specific, carefully tailored and balanced regime of mask
work protection in other chip-producing countries.
Section 902 of the SCPA sets out the criteria under which foreign
works are eligible for protection in the United States. Section
902(a)(1) provides generally that a mask work fixed in a semiconductor
chip product, by or under the authority of the owner of the mask work,
may be protected under the SCPA if certain criteria are met.
The first of these is that when registration is sought or the mask
work is first commercially exploited anywhere in the world, the owner
of the mask work is (1) a U.S. national or domiciliary, (2) a national,
domiciliary or authority of a foreign country that belongs to a treaty
to which the United States also belongs that protects mask works, or
(3) a stateless person regardless of where that person may be
domiciled. Protection is also available if the mask work is first
commercially exploited in the United States, or when the mask work
comes within the scope of a Presidential proclamation issued under the
SCPA.
The SCPA sets out the statutory criteria against which foreign laws
are to be evaluated before issuing a Presidential proclamation. It
provides substantially that when the President concludes that a foreign
country grants U.S. mask work owners protection substantially the same
protection that it grants its own nationals and domiciliaries, or on
substantially the same basis as under the SCPA, the President may
extend protection under this chapter to mask works of owners who are
nationals, domiciliaries, or authorities of that country, or to mask
works which are first commercially exploited in that country.
In 1987 the Chairman of the then House Subcommittee on Courts,
Civil Liberties and the Administration of Justice noted that the
transition provisions in section 914 of the SCPA were ``intended to
encourage the rapid development of a new worldwide regime for the
protection of semiconductor chips.'' 133 Cong. Rec. E1283 (daily ed.
April 6, 1987). These transitional provisions empowered the Executive
to use the issuance of interim protection orders under section 914 of
the SCPA as a means to encourage other nations to move speedily to
establish substantially similar systems of protection These provisions
originally were set to expire three years after the date of the
enactment of the SCPA, November 7, 1987.
The Congress has twice extended the authority to issue interim
orders in the belief that this process is promoting the protection of
U.S. mask works abroad and that the speedy enactment of laws in other
countries that are patterned after U.S. law is progress. H.R. Rep. 100-
388, 100th Cong., 1st Sess. (1987). Under the SCPA, the Assistant
Secretary of Commerce and Commissioner of Patents and Trademarks has
been delegated the tasks of determining when and under what conditions
foreign mask works will be eligible for interim protection. To become
eligible, a foreign government must demonstrate that it is making good
faith efforts toward establishing a regime of protection in its
territory that is substantially similar to that which is provided in
the United States under the SCPA.
The countries to which interim protection has been extended (the
Member States of the European Community, Australia, Austria, Canada,
Finland, Japan, Sweden, and Switzerland) cooperated with the United
States to try to establish a treaty for the adequate and effective
protection of mask works in the World Intellectual Property
Organization (WIPO). A Diplomatic Conference for the negotiation of a
Treaty on the Protection of the Layout-Designs of Integrated Circuits
(IPIC Treaty) was held in Washington during the month of May 1989. The
IPIC Treaty adopted at the conclusion of the Conference did not meet
the needs of either Japan or the United States. No developed country
has thus far signed the Treaty, and it is yet to come into force.
Subsequent to the Diplomatic Conference, the United States has
continued to work to conclude a multilateral agreement for the adequate
and effective protection of semiconductor integrated circuit layout-
designs. The Agreement on the Trade Related Aspects of Intellectual
Property (TRIPs) that was adopted on December 15, 1993, in the Uruguay
Round of Trade negotiations in the General Agreement on Tariffs and
Trade contains a section that will require such protection. It builds
upon the substantive provisions of the IPIC Treaty and adds the missing
features deemed necessary to provide an adequate level of protection.
It permits compulsory licensing of semiconductor technology only for
public non-commercial uses or to remedy an adjudicated antitrust
violation, it requires innocent infringers to pay reasonable royalties
after notice, and it provides that products that include infringing
chips fall within its scope of protection. Thus the TRIPs Agreement
provides the level of protection in an internationally recognized text
that is fully consistent with the U.S. SCPA and meets, or exceeds, the
levels of protection provided in other countries' chip protection laws.
The countries to which interim protection has been extended to all
worked closely with the United States to achieve this goal. However,
the TRIPs Agreement has not yet been implemented by the United States,
and the presently issued interim orders will expire on July 1, 1994,
before the implementation of the TRIPs agreement.
The combination of the standards set out in section 902 and the
process established to implement section 914 clearly appear to have
satisfied the Congressional intent behind this unprecedented process.
In 1984, only the United States had specific legislation in place for
the protection of chips, while today such protection is in place in all
of the countries to which interim protection has been extended. U.S.
semiconductor chip layout-designs enjoy protection in all of those
countries today. In some, the protection is enjoyed on the basis of
national treatment and in some on the basis of reciprocity.
Since the interim orders were last extended, no complaints about
the adequacy of the mask work protection laws in any of the countries
to which interim protection has been extended have been received.
Should such complaints arise in the future, they can be taken into
account in determining whether a particular interim order should be
rescinded prior to its scheduled termination.
Because of this favorable environment, and in order to ensure the
continuing protection of U.S. layout-designs in foreign markets, I have
determined that extending the present interim orders will provide the
time needed for the final implementation of the TRIPs Agreement which
will provide the basis for an adequate and effective muiltinational
system for the protection for semiconductor mask works. In light of
this, I am extending the interim orders for Japan, Sweden, Australia,
the Member States of the European Community, Canada, Switzerland.
Finland and Austria under Section 914 of the SCPA. These orders will
expire on July 1, 1995.
Dated: May 26, 1994.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 94-14520 Filed 6-14-94; 8:45 am]
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