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

Integrated circuits – commonly known as “chips” or “micro-chips” – are the electronic circuits in which all the components (transistors, diodes and resistors) have been assembled in a certain order on the surface of a thin semiconductor material (usually silicon).

In modern technology, integrated circuits are essential elements for a wide range of electrical products, including articles of everyday use, such as watches, television sets, washing machines, and cars, as well as sophisticated computers, smart phones, and other digital devices. Developing innovative layout designs of integrated circuits is essential for the production of ever-smaller digital devices with more functions.

While the creation of a new layout-design is usually the result of an enormous investment, both in financial terms and in terms of the time required from highly qualified experts, the copying of such a layout-design may cost only a fraction of the original investment. In order to prevent unauthorized copying of layout designs and to provide incentives for investing in this field, the layout design (topography) of integrated circuits is protected under a sui generis intellectual property system.

Basics

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.

Conditions for the protection of layout-designs 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.

The Washington Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC) was adopted by WIPO member states in 1989. Although the Washington Treaty has not entered into force, its substantive provisions have been incorporated by reference in the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement), to a large extent. These provisions deal, among other things, with the definitions of “integrated circuit” and “layout-design (topography)”; requirements for protection; exclusive rights conferred and their limitations; as well as exploitation, registration and disclosure. The TRIPS Agreement provides for additional provision, inter alia, on the scope and term of protection.

The international legal framework leaves it open to member states as to which legal form of protection for the layout designs of integrated circuits is provided. In most countries, a special law (sui generis law) on layout-designs (topographies) of integrated circuits (or sometimes called “mask works”) exists. However, countries may provide protection of layout designs of integrated circuits by the law on copyright, patents, utility models, industrial designs, unfair competition or any other law (or a combination of any of those laws).

Each national law provides protection of layout designs of integrated circuits related to activities in its territory. In countries where registration is required, an application for registration has to be filed in each country in which protection is sought. In other countries, the first commercial exploitation anywhere in the world is sufficient for obtaining protection.

Objectives of the protection of layout designs of integrated circuits

Integrated circuits are manufactured in accordance with very detailed plans or layout designs. The layout designs of integrated circuits are creations of the human mind. They are usually the result of vast investment, of both expertise and financial resources. There is a continuing need for the creation of new layout designs that reduce the dimensions of existing integrated circuits and simultaneously increase their functions.

Whilst creating a new layout design for an integrated circuit involves a major investment, it is possible to copy such a layout design for a fraction of that cost. Copying may be done by photographing each layer of an integrated circuit and preparing masks for the production of the integrated circuit on the basis of the photographs obtained. The high cost of the creation of such layout designs and the relative ease of copying are the main reasons why layout designs need protection, in order to foster sustainable investment and innovation in the field.

While the exclusive right to the topography is intended to encourage creativity, the possibility of “reverse engineering” by others for the purpose of evaluation, analysis, research or teaching is meant to strike a balance in order to enable improvements of existing integrated circuits and their compatibility.

In general, layout designs of integrated circuits are not considered to be industrial designs, since they do not determine the external appearance of integrated circuits, but rather the physical location, within the integrated circuit, of each element with an electronic function.

Moreover, layout designs of integrated circuits are normally not patentable inventions, because making them usually does not involve an inventive step, although it does requires a great deal of work by an expert. The subject matter of layout design protection does not extend to the inventive nature or function of a product or a process of making a product, but it does cover the original designs of a three-dimensional disposition, which is the result of an intellectual effort.

Further, copyright protection may not apply if national law determines that layout designs cannot be copyrighted, or that the concepts related to copyright protection might be too general to provide specific protection of layout-designs and related integrated circuits and articles.

In order to effectively protect intellectual property with respect to integrated circuits, different aspects of the integrated circuits can be protected by different types of intellectual property rights in a complementary manner.

Other intergovernmental organizations