INTELLECTUAL PROPERTY LAW

Semiconductor Integrated Circuits Layout-Designs

 The first legislation for protection of semiconductors was the US Semiconductor Chip Protection Act,
1984. It prohibited protecting works which are not original which are not original and which consist of
designs that are staple, commonplace, or familiar in the semiconductor industry.

Treaty on Intellectual Property in Respect of Integrated Circuits (TIPRIC) and TRIPS Agreement

 Standards for protection of layout and integrated circuits were laid down by World Intellectual Property
Organisation (WIPO). This resulted in the Treaty on Intellectual Property in Respect of Integrated
Circuits (IPIC Treaty) but it is not in force due to resistance from US and Japan.
 Many features of this Treaty were incorporated into the TRIPS Agreement to a certain extent
 By virtue of Article 35 of the TRIPS Agreement the members agreed to provide protection to the layout-
designs (topographies) of integrated circuits in accordance certain provisions of the TIPRIC.
 The TIPRIC defined Integrated Circuit and layout-design (topography).
 It has certain provisions for use without authorisation of the right holder which would not constitute as
infringement. This includes use for private purposes or for the sole purpose of evaluation, analysis,
research or training.
 TIPRIC also accommodates the provisions of the Paris and Berne Conventions.
 The Agreement safeguards a person who does any of the acts which are prohibited by Article 36, without
knowledge off the unlawful incorporation of the layout-design or the integrated design.
 Term of protection in countries requiring registration shall not be less than 10 years:
- from the date of filing an application for registration, or
- from the first commercial exploitation (wherever in the world it occurs)
 In countries where registration is not required, term of protection cannot be less than 10 years from the
date of first commercial exploitation, wherever it occurs.
 Member countries can provide that protection shall lapse after a period of 15 years after the creation of
the layout-design.

Semiconductor Integrated Circuits Layout-Design Act, 2000 (SICLD)

 In India – we have SICLD, 2000

 Why another legislation for SICLD when there is design act? Because it has a functional element and
cannot be protected under designs act. In Industrial designs, only the aesthetic appeal of the product is
protected.
 S. 2 (r): A semiconductor integrated circuit refers to a product having transistors and other circuitry
elements which are inseparably formed
- on a semiconductor material
- or an insulating material
- or inside the semiconductor material
- and designed to perform an electronic circuitry function.
 S. 2 (h): layout design means a layout of transistors and other circuitry elements and includes lead wires
connecting such elements and expressed in any manner in a semi conductor integrated circuit.
 S. 2(n): a registered layout refers to a layout design which is actually on the register.
Registry

 S. 3: Central government to appoint any person as the Registrar of SICLD (S. 3 (1)) and any such other
officers as it thinks fit for purpose of discharging functions of the Registrar under his superintendence or
on his direction (S. 3 (2)).
 S. 4: Powers of Registrar:
- He may transfer any pending before an officer appointed u/s 3(2) and deal with such matter himself.
- He can do this either de novo (afresh) or from the stage it was withdrawn
 S. 5: establishes the SICLD Registry.
Central government by notification can define the territorial limits within which an office of SICLD
Registry may function.
 S. 6: there shall be a record called the Register of Layout-Designs. In this all registered layout designs
with the names, addresses and descriptions of the proprietor and such other matters shall be entered.
S. 6(3): copy of the register to be kept at each branch office of the SIC as directed by the Central Govt.

Conditions of Registration
 S. 7(1): grounds for registration: A layout design won’t be registered as a layout design:
a. If it is not original, or
b. If it has been commercially exploited anywhere in India or in a convention country, or
c. If it is not inherently distinctive, or
d. If it is not inherently capable of being distinguishable from any other registered layout-design
 If a layout design has been commercially exploited for not more than two years from the date on which
the application for its registration was filed (in India or any other convention country), then it shall be
treated as not having been commercially exploited.
 S. 7(3): Essential attributes of an original layout-design:
- Creator’s own intellectual efforts
- Deviation from common knowledge among creators of layout designs and manufacturers of SICs
- But in case a layout design is created in execution of a commission or a contract of employment,
then the right to registration of it shall vest in the person who commissioned the work, unless there is
a contractual provision for the contrary.

Ocular Sciences Limited v Aspect Vision Care Ltd. and Others [1997] RPC 289
- There are two possible standards of originality
1. if it is not known to everyone
2. a very high standard of originality.
- In Integrated circuits, it is very to attain the second standard.
- Thus the standard includes first standard.

Prosecuting an application

 S. 8: A person claiming to be the creator of a layout design can file an application for registration.
S. 8(2): it is to be filed in the office of SICLD Registry within whose territorial limits the applicant’s
principal place of business falls.
 S. 9: The Registrar may withdraw acceptance if he is satisfied that the layout-design is prohibited from
registration u/s 7. He can do this after acceptance and before its registration and after hearing the
applicant.
 S. 10: after acceptance of application, Registration shall cause it to be advertised within 14 days from the
date of acceptance
S. 10(2): if application is amended or corrected u/s 12 after the first advertisement, he shall cause thee
application to be advertised again
 S. 11: Opposition can be made to the registration within three months from the date of advertisement or
re-advertisement or within such time as the Registrar may prescribe.
 S. 11(2): the registrar will serve the copy of the opposition to the applicant. The applicant, within 2
months sends a counter statement to the Registrar consisting of the grounds he relies on for his
application. If he doesn’t send this counter statement, he shall be deemed to have abandoned such
application
 S. 11(5): on filing of a counter statement the Registrar will then serve a copy to the opposing party and
give both of them an opportunity to be heard. He shall take a decision after hearing the parties and
considering the evidence.
 S. 12: correction and amendment of an application for registration or a notice of opposition
 S. 13: registrar shall register the layout-design
- if it has not been opposed in the given time frame, or
- was decided in favour of the applicant on opposition
 S. 15: registration of a layout-design shall be for a period of 10 years from the date of registration, or
from the date of first commercial exploitation, whichever is earlier.

Rights on registration and infringement

Right to exclusively commercially exploit the design.

Assign or transfer the design
Sell the design
Right to take actions regarding infringement.

 S. 16: a person won’t be entitled to institute any proceeding

 S. 17: Registration confers the exclusive right to use the layout-design on the registered proprietor. He
can also obtain relief in respect of any infringement
 S. 19: Registration of a layout design and shall be the prima facie evidence of the validity of such layout-
design.
 S. 18(1): Acts of infringement include:
a) An act of reproducing, by incorporating a registered layout design (in its entirety or part thereof ) in a
semiconductor integrated circuit, except for an act of reproducing a part of the registered layout
which is not original
b) act of importing or selling or distributing, for commercial purposes
- a registered layout design, or
- a semiconductor integrated circuit incorporating such registered layout-design, or
- an article incorporating such a semiconductor integrated circuit containing such registered layout-
design for the use of which such person is not entitled
 S. 28: a registered user can make a complaint before the competent criminal court for the infringement
in his own name as if her were the registered proprietor.

Acts that are not considered as infringement

 S. 18(2): act performed for the limited purposes of scientific evaluation, analysis, research or teaching –
does not constitute infringement
 S. 18(5): The acts mentioned under S. 18 (1) (b) [see above] would not be considered as infringement if
the person performing such act does not possess any knowledge or has no reasonable ground to know
while performing or directing to be performed such act in respect of such semiconductor integrated
circuit or article that it incorporated a registered layout-design.
However, if such a person received a notice of such knowledge, he may continue to perform such act in
respect of stock on hand or ordered before such time, but he shall be liable to pay a sum to the registered
by way of royalty.
S. 18(7): Act done with the permission of the registered proprietor shall not be considered as
infringement.

Assignment and transmission

 Chapter V of the Act.
 S. 20: registered proprietor has the power to assign the layout-design
 S. 21: registered layout can be assigned with or without the goodwill of the business concerned
 S. 22: in case assignment is being made otherwise than in connection with the goodwill of business, then
the assignment shall not take effect unless the assignee applies to the registrar for directions to advertise
the assignment, within a period of six months from the date of the assignment.
 S. 23(1): assignee of a registered layout-design must apply to the Registrar to register his title. On the
receipt of such application AND on proof of the assignee’s title, the registrar should register him as the
proprietor of the layout design and shall also cause the particulars to be entered in the register.
In case of a dispute, he may refuse to register until the rights of the party have been determined by a
competent court.
 S. 24: a person other than the registered proprietor may be registered as a registered user.
This can be done by way of a joint application by the registered proprietor and the proposed registered
user (S. 25(1))
 This application must be accompanied
- by an agreement in writing or its duly authenticated copy,
- affidavit made by the registered proprietor disclosing particulars of the relationship between the
registered proprietor and the proposed registered user, degree of control by the proprietor over the
permitted use, conditions or restrictions, etc.
 S. 25 (2): once these conditions are fulfilled, registrar is to register the proposed registered user.
S. 25(3): if there are other registered users, they should be notified by the registrar by way of a notice of
the new registered user
 S. 26: powers of a registrar to cancel registration as a registered user.
S. 26(1) (b): It may be cancelled by the registrar on any of the following grounds:
i. Layout design used otherwise than in accordance with the agreement
ii. Misrepresentation by the registered user or the proprietor
iii. If circumstances have changed since the date of registration in such a way that at the date of suck
application for cancellation they would not have justified registration of the registered user
iv. Registration ought not to have been effected having regard to the right vested in the applicant by
virtue of a contract in the performance of which he is interested
 S. 26(1) (c): Registrar may cancel on his own motion or on the application on the ground that any
stipulation in the agreement between the registered proprietor and the registered user is not being
complied with.
 The registered user does not have the right of assignment or transmission. If it is a firm, the registered
user shall use the layout design as long as the registered user is a member of that firm.
 S. 30: power to rectify the register

Layout-Design Appellate Board

 S. 32: central govt. is to establish the Appellate Board known as the Layout-Design Appellate Board
consisting of a chairperson, vice-chairperson, and such other persons as the central govt. thinks fit
 Bench – one judicial member, one technical member

S. 51(1): compulsory licensing: the board shall not permit the use of a registered layout-design, by any such
person authorised by the govt, unless the Board is satisfied that such person so authorised has made efforts
to enter into agreement with the registered proprietor of such design-layout on reasonable commercial terms
and conditions for the permitted use of such layout-design and such efforts had not been successful within
prescribed period.

S. 51(2): appellate board shall also determine the amount of royalty to be paid by the government or the
person authorised by the government to the registered proprietor for such permitted use.

S. 51(3): on an application of the registered proprietor, the appellate board may cancel or amend such
permission if

- the Board is satisfied that any of the conditions subject to which the permission was granted has not been
observed, or
- the circumstances which led to the granting of such permission have ceased to exist, or
- have been substantially altered.

Offences and Penalties

 S. 56 – any person who knowingly infringes a registered layout-design shall be punishable with
imprisonment for a term which may extend to three years, or with fine not less than Rs. 50, 000
extending to Rs. 1, 000, 000, or both.
 S. 57 (2) – if a person falsely represents a layout-design as registered  punishment: imprisonment for a
period upto six months, or with fine extending to Rs. 50, 000, or both

reverse engineering

In case of SICLD, instead of forward engineering, reverse engineering takes place. That is, someone
else’s product is taken and after going back from there something is added to it and it turns out to be
a more effective way. Reverse engineering is where the domestic industries work. Thus, courts
contemplating the question of where to draw the line. Question: is there IP in reverse engineering?

Brooktree Corp. v. Advanced Micro Devices, Inc.

- Brooktree was a manufacturer or semiconductor chips for use in computer graphic displays and
AMD was semiconductor chip manufacturer directly competing with brooktree, with 30x greater
sale
- Brooktree has Integrated Circuit Chips for converting digital graphics image information at high
frequencies for display on very high resolution. And AMD’s semiconductor chips had a portion
COPIED from the brooktree chips
- AMD’s defence was that it has reverse engineered and independently designed its chips and not
copied their technology
- Brooktree can claim damages from amd because although reverse engineering is okay, but where
originality and innovation stops, or inherent effectiveness stops, it is not good.
-