Japón

Estados Unidos de América

Patentes (incluida la protección de variedades vegetales)

Initial question from Japan 11. Whereas 35 U.S.C. 154(c)(3) allows third parties to continue the exploitation of an invention which began, or for which significant investment was made, before the date 6 months following the date of the enactment of the Uruguay Round Agreements Acts upon the payment of an equitable remuneration to the patentee, Article 70.4 of the TRIPS Agreement allows a WTO Member to limit the remedies available for such acts commenced only before the date of acceptance of the WTO Agreement by the Member. Please explain whether these two provisions are the same or not. If not, please explain the consistency between the two provisions.

"In respect of any acts in respect of specific objects embodying protected subject matter which become infringing under the terms of legislation in conformity with this Agreement, and which were commenced, or in respect of which a significant investment was made, before the date of acceptance of the WTO Agreement by that Member, any Member may provide for a limitation of the remedies available to the right holder as to the continued performance of such acts after the date of application of this Agreement for that Member. In such cases the Member shall, however, at least provide for the payment of equitable remuneration." The WTO Agreement became applicable to the United States, as it did for all developed countries, on 1 January 1996. The date on which the United States "accepted" the WTO Agreement was 30 December 1994. Under the terms of Article 70.4, acts that were commenced or for which a significant investment was made before the date of acceptance of the WTO Agreement by the United States can serve as a basis for enjoying limited liability in respect of infringement of a patent whose term was extended through operation of Article 70.2 of the TRIPS Agreement. Section 154(a)(3) recognizes acts that occurred six months after the date of passage of the legislation - which is five months and nine days after the WTO agreement was accepted by the United States. To our knowledge, this grant of a minimal amount of additional time has not had a commercial effect.