Patent Expert Issues: Layout Designs (Topographies) of Integrated Circuits

For the purpose of intellectual property protection, the terms “integrated circuits” and “layout design (topography)” are defined as follows*:

• An “integrated circuit” means a product, in its final form or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in and/or on a piece of material and which is intended to perform an electronic function.
• “Layout-design (topography)” means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.
• Layout-designs of integrated circuits are also called topographies of integrated circuits or mask works of semiconductor chip products.

* Article 2 of the Washington Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC).

A layout design of an integrated circuit can be protected if it is original in the sense that it is the result of the creators’ own intellectual effort and not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of the creation.

In general, protection of the topography requires that an integrated circuit be registered or commercially exploited.

In general, a right holder has the exclusive right to prevent or stop others from commercially using the protected layout designs. In other words, the original layout design cannot be reproduced entirely or partly for commercial purposes by others, without the authorization of the holder of the right. Further, without the authorization of the right holder, a protected layout-design, an integrated circuit incorporating the layout design, or an article incorporating such a layout design cannot be imported, sold or otherwise distributed, for commercial purposes.

The term of protection varies from one country to another. According to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement), members must provide for a minimum protection of at least ten years from the filing of the application for registration or from the first commercial exploitation of integrated circuits.

In some countries, topographies of integrated circuits have to be registered in order to obtain protection. In general, such registrations take place without extensive examination. However in some countries, an application for registration must be filed within two years and protection commences with the first commercial exploitation. In other countries, the protection starts automatically with the first commercial exploitation, separately, or as incorporated in an integrated circuit.

In general, an application for registration has to contain information on the owner, a title and a drawing of the topography, and a detailed description or deposit of the topography of the integrated circuit. In some countries, where the integrated circuit has been commercially exploited, submission of a sample of that integrated circuit, along with information defining the electronic function performed by the integrated circuit, may be also required. Registration is usually subject to the payment of a fee.

The beneficiary of the protection is, typically, the creator of a layout design. However, if the design is created during the course of an employment contract, most national laws provide for an implied transfer of rights to the employer. Since layout designs of integrated circuits are protected by sui generis intellectual property rights, they could be assigned or licensed to others.

The extent of the exclusive rights varies from one country to another. In general, a right holder has the exclusive right to prevent or stop others from commercially using the protected layout design. In other words, the original topography cannot be reproduced entirely or partly for commercial purposes by others, without the authorization of the holder of the right. Further, without the authorization of the right holder, a protected layout design, an integrated circuit, or an article which incorporates an unlawfully reproduced layout-design cannot be imported, sold or otherwise distributed, for commercial purposes by others without the authorization of the holder of the right.

However, the performance of an act by a third party for private use or for the sole purpose of evaluation, analysis, research or teaching is not considered to require the authorization of the right holder. Therefore, “reverse engineering” of an integrated circuit for such purposes is not restricted.

In sum, layout designs of integrated circuits are protected against copying of the topographies and against the distribution of products which integrate copied topographies, but the right holder cannot prevent others from developing other original topographies which have the same functions as those of protected topographies.

The right holder may enforce his or her rights against an infringer through civil action. Remedies can include injunctions, damages and seizure of goods.

In most countries, topographies of integrated circuits are registered without substantive examination. Therefore, lack of originality may be raised as a defense in infringement proceedings.

In some countries criminal sanctions against an infringement are also available.