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1999 PROTECTION OF LAYOUT - DESIGNS (TOPOGRAPHIES; OF INTEGRATED CIRCUITS
ACT 11
COMMONWEALTH OF DOMINICA
ARRANGEMENT OF SECfIONS
SECfION
1. Short title. 2. Interpretation. 3. Application of Act. 4. Originality. 5. Right to protection. 6. Effect of protection. 7. Commencement and duration ofprotection. 8. Applications. 9. Correction of application. 10. Application fee. 11. Where application is not in English. 12. Register. 13. Registration and publication -of layout - design. 14. Right to transfer; rectification of Register. 15. Changes in ownership. 16. Licence contracts. 17. Exploitation by Government agency or third person. 18. Invalidation. 19. Agents. 20. Registrar. 21. Exercise of discretionary power. 22. Extension of time for applications. 23. Jurisdiction of Court. 24. Infringement. 25. Offences. 26. Registrar's annual report. 27. Application of international treaties. 28. Regulations. 29. Commencement.
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26th November, 1999
I assent
V.l,.. SHAW President.
AN ACfTO PROVIDE FOR THE PROTECTION OF LAYOUT - DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS AND FOR MATTERS RELATED THERETO
(Gazetted 2nd December, 1999)
BE IT ENACTED by the Parliament of the Commonwealth of Dominica as follows:
1. This Act may be cited as the - PROTECTION OF LAYOUT - DESIGNS (TOPOGRA-
PHIES) OF INTEGRATED CIRCUITS ACT 1999.
2. In this Act, unless the context otherwise requires .:. "CoVrt" means the High Court;
Short title.
Interpretation.
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"integrated circuit" means a product, in its final fonn or an interme- diate fonn, in which the elements, at least one of which is an active element, and some or all of the interconnections, are integrally formed in oron any material, and which is intended to perform an electronic function;
"Journal" means the Journal o~ Intellectual Property created under Act No.8 of 1999. section 5 (d) of the Patents Act, 1999;
Application of Act.
Originality.
"layout- design" means the three dimensional disposition, however expressed, of the elements of an integrated circuit, at least one of which element is active, and of some or all the interconnections of an integrated circuit, or such a: three dimensional disposition prepared for an integrated circuit intended for manufacture;
-Minister'" means the Minister responsible for layout - designs of in tegra ted circuitS;
"right holder" means the person who is regarded as the beneficiary ~ of the protection referred to in section 5 of this Act;
"Register" means the Register of Layout - Designs referred to in section 12; and
"Registrar" means the Registrar of Companies and Intellectual Property;
3. A layout - design which has been commercially exploited anywhere in the world for more than two years before the coming into force of this Act shall not be protected under this Act.
4. (1) No layout - design of an 'integrated circuit shall be protected under this Act unless it is original within the ITlCaning of subsection (2).
(2) A layout - design shall be considered to be original if it IS the result of the creator's own intellectual effort and is not commonplace among creators of layout :- designs and manufactur- ers of integrated circuits at the time of its creation.
(3) A layout - design consisting of a combination of ele- ments and interconnections which are commonplace shall be pro- tected only if the combination," taken as a whole, is original within the meaning of subsection (2).
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5. (1) The right to protection of a layout - design shall belong to Right to protection. the creator of the layout - design and may be assigned or transferred by succession.
(2) Where several persons have jointly created a layout - design, the right shall belong to them jointly.
(3) Where the layout;. design has been created in execution of a commission or a contract of employment, the right to protection of the layout - 'design shall belong, in the absence of an agreement to the contrary, to the person who commissioned the work or to the employer, as the case may be.
6. (1) Protection under this Act shall not depend upon wheth.er Effect of or not the integrated circuit which incorporates the PJotected layout protection. - design is itself incorporated in an article.
(2) Subject to subsection (3) and to section 17, the effect of the protection of a layout -design under this Act shall be to make the following acts unlawful if performed without the authorisation of the right holder -
(a) the reproduction, whether by incorporation in an integrated circuit or otherwise, of the protected layout - design in its entirety or any part thereof, except the re- production of any part that does not comply with the requirement of originality defined in section 4;
(b) the importation, sale or other distribution, for com- mercial purposes, of the p'rotected layout - design, an integrated circuit in which the protected layout - design is incorporated, or an article incorporating such an inte- grated circuit in so far as.it continues to contain an un- lawfully reproduced layout design.
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(3) The effect of the protection of a layout - design under this Act shall not extend to -
(a) the reproduction of the protected layout - design for private purposes or for the sole purpose of evalu- ation, analysis, research or teaching;
(b) the incorporation, in an integrated circuit, of a layout - design created on the basis of such analy- sis or evaluation, and which is itself original within the meaning of section 4, or the performance of any act referred to in subsections (1) and (2) In respect of that layout - design;
(c) the performance of any act referred to in subsec- tion (2) (b) where the act is performed in respect of a protected layout -design, or in respect of an integrated circuit in which such a layout - design is incorporated, that has been put on the market by, or with the consent of, the right holder;
(d) the performance of any act referred to in subsec- ti.on (2) (b) in respect of an integrated circuit incor- porating an unlawfully reproduced layout - design or any article incorporating such an integrated circuit where the person performing or orde~ing the performance of such an act did not know, and bad no reasonable ground for knowing, when acquir ing the integrated circuit, or the article incorporat- ing such integrated circuit, that it incorporated an unlawfully reproduced layout - design; or
(e) the performance of any act referred to in subsec- tion (2) (b) where the act is performed in respect of an identical layout - design which is original and has been crea~ed independently by a third party.
(4) Where the person referred to in subsection 3 (d) has re- ceived sufficient notice that the layout - design was unlawfully re-
produced, that person may perform any of the acts referred to in that
subsection only with respect to the stock on hand or ordered before
he received the notice, and shall be liable to pay, to the right h<?lder,
a sum equivalent to such reasonable royalty as would be payable under a freely negotiated licence in respect of such layout - design.
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7. (1) The protection of a layout - design' under this Act shall Commencemen! commence - and duration of
protection. (a) on the date of the first commercial exploitation,
anywhere in the world, of the layout - design by, or with the consent of, the right holder, provided that an application for protection is filed hy the right
holder with the Registrar within the time limit referred to in section 8 (3); or
(b) un the filing date accorded the application for the regi~Lratjon of the layout - design filed hy the right hl)ld--..:r if the layout - design has not been previ-
ously exploited commercially anywhere in the world.
(2) The protection of a layout - design under this Act shall
terminate ten calender years after the date of commencement therC(if.
8. (1) Any person who wishes to register a layout - design shall Applications. file, with the Registrar, an application on the prescribed form.
(2) The applicant shall file a separ3te application for each
layout - design.
(3) A person may ?PpJy for the registration of a layout - de- sign only if the layout - design has not yet heen commercially ex-
ploited, or has been commercially exploited for not more than two
years anywhere in the world.
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Correction of application.
(4) An application shall - (a) contain a request that the layout - design be regis-
tered, which request shall be accompanied by a brief and precise designation of the layout - design;
(b) indicate the name, address, nationality and, if dif- ferent from the address, the habitual residence of the applicant;
(c) be accompanied by the power of attorney appoint- ing the representative of the applicant, if any, and by a copy or drawing of the layout - design, along with information defining the electronic function which the integrated circuit is intended to perform;
(~) specify tfie date of first commercial exploitation of the layout - design anywhere in the world, or indi- cate that such exploitation has not commenced; and
(e) provide particulars establishing the right to protec- tion under section 5.
(5) Notwithstanding the provisions of subsection (4) (c), the application may omit such parts of the copy or drawing as re- late to the manner of manufacture of the' integrated circuit, pro- vided that the parts submitted are sufficient to enable the layout - design to be identified.
9. (1) Where an application does not comply with the require- ments of section 8 (4), the Registrar shall notify the applicant in writing of the defects in the application and invite him to correct them within two months of such notification.
(2) Where the applicant corrects the application within the time specified by the Registrar, the Registrar shall accord, as the filing date of the application, the date of receipt of the application, provided that at the time of such receipt, the application -
(i) contains an express or implied indication that the registration of a layout - design is requested;
(ii) contains information enabling the identity of the applicant to be established; and
(iii) is accompanied by a copy or drawing of the layout - design.
(3) Where the requirements of subsection (2) are not com- plied with at the date of the receipt of the application but are ful- filled within the time specified by the Registrar, the date of receipt of the required correction shall be deemed to be the filing date of the application, and the Registrar shall confirm the filing date and communicate it to the applicant in writing.
(4) The application shall be deemed not to have been filed if the applicant does not correct any defects in his appl ication within" the time specified by the Registrar.
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10. (1) Every application for the protection of a layout - design Application fce. shall be accompanied by the prescribed application fcc.
(2) Where the application fee is not paid, the Registrar shall, in writing, notify the applicant that the application shall be deemed not to have been filed unless payment is made within two months of the date of the notification.
(3) Where the applicant does not pay the application fce within the time notified, the application shall be deemed not to have been filed.
11. Any application filed under this Act shall, if not in English, be Where application accompanied by a translation thereof in English, verified by the is not in English.
translator that the translation is to the best of his knowledge complete and faithful.
12. (1) The Registrar shall maintain a register to be known as Register. the Register of Layout - Designs in which he shall record all matters which must under this Act be recorded.
(2) The Register shall contain the number, title, filing date and, where indicated in the application under section 8 (4)(d), the date of the first commercial exploitation anywhere in the world, of the layout - design, the name and address of the right holder, and such other particulars as may be prescribed.
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Registration and publication of layout - design.
(3) Any person may, upon payment of the prescdhcd fee, and in accordance with any prescribed conditions, consult, inspect or make a copy of, or obtain an extract from, the Register.
(4) The Register shall be prima facie evidence of anything required or authorised by this Act to be registered, and shall be admissible and sufficient evidence of any such thing.
(5) A certificate signed by the Registrar and certifying that any entry \vhich he is authorised by this Act to make or has not made, or that any other thing which he is so authorised to do has or has not heen done, shall be prima facie evidence, and shall he ad- missible and sufficient evidence, of the matters so certified.
(6) Each Z)f the following, that is to say a copy of -
(a) an entry in the Register or an extract from the Rcgjster which is supplied under suhsection (3): and
(b) any document kept in the Companies and Intellec- tual Property Office, or an extract from any such document, or any matter which has heen puhlished under this Act,
which is a certified copy or a certified extract shall he admitted in' evidence without further proof cmd without production of the original, and such evidence shall be sufficien't evidence of the matter stated therein.
(7) In this section, "certified copy'" and -certi fled extract"" means
a copy or extract certified by the Registrar and sealed yvith his seal.
13. Where an application complies witb the requirements of section 8, the Registrar shall -
(a) register the layout - design in the Register without examining the originality of the layout - design, the applicant's entitlement to protection, or the correct-
ness of tbe facts stated in the application; and (b) publish tbe registration of the layout - design in the
Journal.
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14. (1) Where the substantive content of the application has Right to transfer, been taken from the layout - design of another person v/ithout his rectification of consent, that other person may, in writing, request the Registrar Register. to transfer the application to him.
(2) Where the application has already resulted in a regis- tration, the person may, within three years of the publication of the registration, request the Registrar, in writing, to transfer the regis- tration to him and to rectify the entry in the Register accordingly.
(3) The Registrar shall forthwith send a copy of the request to the right holder, and, within the prescribed period and in the prescribed manner, the right holder may file with the Registrar a counter - statement of the grounds on which he relies.
(4) Where the right holder files a counter - statement, the Registrar shall furnish a copy thereof to the person requesting the transfer and after hearing the parties if th~y wish to be heard, and considering the merits of the case, shall decide whether the appli- cation or registration shoutd be transferred and where applicable whether the Register should be rectified.
15. (1) Any change in the ownership of a protected layout - design shall be -
(a) in writing and addressed to the Registrar; (b) recorded in the Register by the Registrar; and (c) published by the Registrar in the Journal.
(2) A change referred to in subsection (1) shall have no ef- fect against third parties unless it has been recorded.
Changes in ownership.
16. (1) The owner of a registered layout - design may grant Licence contracts. licences in respect of that layout - design.
(2) A licence contract in respect of a layout - design shall upon the registration of the layout - design, be filed with the Reg- istrar who shall keep its contents confidential but shall record it and publish a reference thereto in the Journal.
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Exploitation by Government agency or third person.
(3) The licence contract shall have no effect against third par- ties unless it has been recorded.
17. (1) Where- (a) the public interest, in particular, national security,
nutrition, health, or the development of any other vital sector of the national economy requires the exploitation of a protected layout - design for pub- lic non - commercial use; or
(b) the Minister has determined that the manner of exploitation by the owner of the protected layout - design or his licencee is anti - competitive, and he is satisfied that the exploitation of the layout - design in accordance with this subsection would remedy such practice,
the Minister may decide that even without the authorisation of the owner of the right holder, a Government agency or a third person designated by the Minister may exploit the layout - design.
(2) The exploitation of the layout - design shall he limited in scope and duration to the purpose for which it was authorised and shall be predominantiy for the supply of the domestic market.
(3) The exploitation shall be non - exclusive and shall be subject to the payment, to the right owner, of an adequate remu- neration therefor, taking into account the economic value of the ,Minister's authorisation as detennined in his decision and where applicable the need to correct anti - competitive practices.
(4) Upon the request of the right holder or of the benefici- ary of the authorisation the Minister may, after hearing the parties if they wish to be heard vary the tenns of the decision authorising the exploitation of the layout - design to the extent that changed circumstances justify su'ch variation.
(5) Upon the request of the right holder the Minister shall tenninate the non - voluntary licence if he is satisfied, after hear- ing. the parties if they wish to be heard, that the circumstances which led to his decision have ceased to exist and are unlikely to recur or
that the beneficiary of the authorisation has failed to comply with the terms cif the authorisation.
(6) Notwithstanding subsection (5), the Minister shall not terminate an authorisation if he is satisfied that the adequate pro- tection of the legitimate interests of the beneficiary of the authori- sation justifies the maintenance of the authorIsation.
(7) Where a third person has been designated by the Minis- ter, the authorisation IJ?ay only be transferred with the enterprise or business of the beneficiary of the authorisation, or with the part of the enterprise or business within which the layout - design is being exploited.
(8) A request for the Minister's authorisation shall be ac- companied by evidence that the right holder has received fro~ the person seeking the authorisation a request for a licence, but that that person has been unable to obtain such licence on reasonable commercial terms and conditions and within a reasonable time.
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18. (1) The Court may, on the application of any interested Invalidation. person invalidate the registration ofa layout - design on the grounds that -
(a) . the layout - design is not a layout - design as defined in this Act;
(b) thelayout - design is not original within the mean- ing of this Act;
(c) the right holder is not entitled to protectiori under section 5; or
(d) where the layout - design has been commercially exploited anywhere in the world before the filing of the application for registration of the layout - design, the said application was not filed within the time limit referred to in sections 7 (1) and 8 (3).
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Agents.
Registrar.
Exercise of discretionary power.
Extension of time for applications.
Jurisdiction of Court.
(2) Where the grounds for invalidation are established with respect only to part of the layout - design, the Court shall invali- date only the corresponding part of the registration.
(3) . Any invalidation under this section shall be regarded as null and void from the date of the commencement of the protec- tion of the layout - design.
(4) The Registrar of the High Court shall, in writing, notify the Registrar of any final decision of the Court relating to invalida- tion under this section and the Registrar shall record the decision and publish it in the Journal as soon as possible.
19. Where an applicant's ordinary residenc~ or principal place of business is outside Dominica he shall be represented by a legal practitioner resident and practicing in Dominica in accordance with the relevant law.
20. The Registrar shall perfonn the functions and exercise the }X)wers conferred on him by this Act and any other enactment.
21. The Registrar shall give any party to a proceeding before him the opportunity of being heard before exercising any discretionary }X)wer vested in him under this Act if the exercise thereof might adversely affect that party.
22. (1) Where the Registrar is satisfied that the circumstances justify it; he may, upon the written request of any interested perso~, upon such terms as he may direct and upon written notice to the parties concerned, extend the time for doing any act or taking any proceeding under this Act or the Regulations.
(2) The extension may be granted even though the time for doing the act or taking the proceeding has expired, but the time for filing an application referred to in section 8 (3) may not be ex- tended.
~. (1) The Higb Court shall have jurisdiction in cases of dispute relating to the application of this Act or the Regulations and in matters which, under this Act, may be brought before it.
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(2) Any person who is aggrieved by a decision of the Minis- ter or the Registrar under this Act may, within two months of that decision, appeal to the Court.
24. (1) An infringement shall consist of the perfonnance of Infringement. any act which is unlawful under section 6.
(2) On the application of the right holder or of a licencee if he has requested the owner to institutt: court proceedings for a spe- cific relief and the right holder has refused or failed to do so, the Court may as soon as possible -
(a) grant an injunction to prevent infringement or an imminent infringement;
(b) award damages;
(c) order the seizure, forfeiture or destruction of - (i) any infringing layout - design, integrated cir-
cuit or any product or "article of which the infringing layout - design or integrated design forms an integral part; or
(ii) any article, instrument or thing by means of which any such infringing layout - design,
integrated circuit or article was produced; or
(d) grant any other remedy provided for in the general law.
(3) An action under this section may be instituted only af- ter an application for the registration of the layout - design has been filed with the Registrar.
25. (1) Any person who performs an act which is unlawful Offences. under section 6 commits an offence and is liable to a fine of not less than fifteen thousand dollars, but not more than forty thousand dollars, or to imprisonment for a term ofnot less than five years, but not more than ten years, or to both such fine and such imprisonment.
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(2) Any person who, knowing the same to be false - (a) makes or causes to be made a false entry in the
Register; (b) makes or causes to be made any document falsely
purporting to be a copy of an entry in the Register; or (c) produces, tenders or causes to be produced in evi-
dence any such entry or copy thereof,
commits an offence and is liable to a fine of not less than ten thousand dollars, but not more than thirty thousand dollars, or to imprisonment for a term of not less than three years, but not more than ten years, or to both such fine and such imprisonment.
Registrar's annual 26.. The Registrar shall, before 1SI June every year, make an annual report. repo'rt to the Minister regarding the operation:of this Act and the
discharge of his functions thereunder.
Application of international treaties.
Regulations.
Commencement.
27. The provisions of any international treaty in respect of industrial property to which Dominica is a party shall apply to. matters dealt with by this Act and, in case of conflict with the provisions of this Act, shall prevail over the latter.
28. The Minister may make regulations providing for any matter which is to be prescribed under this Act, and for giving effect to the purposes of this Act.
29. (1) This Act shall come into force on such day as the Minister may, by Order published in the Gazette, appoint.
(2) Different days may be appointed for bringing different provisions into force, or for bringing different purposes of the same provision into force.
Passed in the House of Assembly this 9th day of september, 1999.
RUTH SIMON (MRS.) Clerk of the House ofAssembly (Acting).