IN this 50th instalment, we present a synoptic treatment of the legal protection of lay-out designs of integrated circuits.
Integrated circuits or semi-conductor chips are the small electronic circuitry embedded inside most electronic devices such as watches, washing machines, television sets, radios, automobiles and other industrial or other household products. Lay-out designs or topographies are the three-dimensional patterns or configurations as seen inside electronic devices.
It is the pattern as opposed to the intended function of the inlaid elements constituting the device that is the subject-matter of protection in this article. Lay-out designs are therefore protected as such and not only upon their fixation or incorporation into the integrated circuit or semiconductor chip.
They are thus a special species of designs warranting special treatment separate from that accorded to aesthetic and functional designs.
By virtue of their minute nature and character, lay-out designs or semiconductor chips are certainly intricate products of sublime human ingenuity, and whose process of manufacture entails enormous investment in terms of time, expertise and financial expenditure. The demand for the production of smaller and smaller lay-out designs which reduce the dimensions, hence sizes of the integrated circuits continually increases exponentially in response to technological evolutions. However, copying and piracy of such designs is considerably cheap.
That minute as they are, integrated circuits are pervasively utilised in a multiplicity of industrial products and processes, is a truth that is universally acknowledged. As such, lay-out designs contribute tremendously in socio-economic development, hence towards the satisfaction of human needs and wants. It is for this very reason that legal protection of lay-out designs of integrated circuits finds justification.
Lay-out design protection is a fairly recent international legislative phenomenon which was introduced in 1989 by the adaptation of the Intellectual Property in Respect of Integrated Circuits (Ipic) Treaty. Then, the treaty’s appeal was geopolitically limited and was confined mainly to electronic products manufacturing giants in the Americas, Europe and Japan. However, its subsequent incorporation into the Trade Related Aspects Intellectual Property Rights (TRIPS) Agreement in April 1994 made it assume an international character. All World Trade Organisation (WTO) member states became obliged to implement it in their respective territorial jurisdictions.
Requirements for protection
In terms of Article 3(2) of the Ipic Treaty, to be protectable, a lay-out design must be new or original and not commonplace in the art in question. By new or original is meant that it must be the result of the designer’s own creative ingenuity and not an imitation. That is to say, the design must be different from the state of the known art as at its application for registration, in the same manner as the novelty of aesthetic designs and patents is to be adjudged.
The phrase “not commonplace” requires that the lay-out design in question must not be the generally-known practice and technique amongst creators of lay-out designers and manufactures of integrated circuits or semi-conductor chips of the trade, or that it must possess a distinct individual character. Any combination of already known or commonplace patterns would qualify for registration so long as this satisfies the novelty requirement thresholds.
Accordingly, the state of the art against which the novelty requirement is assessed comprises all matter in the world, disclosed at any time; whether by use, written, oral or any other means. This is an absolute novelty requirement as applied to patents.
However, some national jurisdictions apply the qualified novelty requirement by which the relevant state of the art is restricted either geopolitically, in time or mode of disclosure. We submit though that with the advent of digital technology, the nature and scope of the state-of-the-art required may be the subject of review by most jurisdictions which embrace qualified or limited state-of- the-art requirement.
Additionally, as is the case with patents and aesthetic designs, to be protectable, lay-out designs of integrated circuits must be produced by an industrial process that is capable of consistent repetition. That is to say, it must be a subject of manufacture with utility value to the related industry.
The rights bestowed upon the creator by virtue of registration exclude all other third parties from making, importing, using, practising, working or disposing of the registered design for as long as its registration is extant. In the same manner that the lay-out designs are registered with reference to specific classes of goods, it follows too that the exclusion is with respect to the stated classes of goods. So too would there be no infringement outside the stated classes of goods in relation to which lay-out design is registered.
Term of protection
The international legislative framework accords lay-out designs terms of protection which are substantially similar to those of aesthetic designs, ie a minimum period of at least 10 years from the date of filing of the application for registration, or its first commercial exploitation in the world. Additionally, WTO member states are at liberty to provide in their domestic laws a minimum period of protection of 15 years from the date of creation of the lay-out. Protection also extends to articles of manufacture which incorporate the design-related integrated circuits in which the lay-out design is embedded. Thus any such acts done by third parties without the authorisation from the rights holder constitute actionable infringement conduct.
Limitations and exceptions
Reverse engineering is the use of an existing design to improve upon it. It is thus based on the international consensus that legislative protection is the “sine qua non” or condition precedent to stimulating, and hence giving impetus to increased and transcendal lay-out designs. The legislative framework thus provides for exception with respect to reverse engineering, provided that this is done in the spirit of private use, evaluation, analysis, research or teaching purposes; the results of which must satisfy the concepts of originality within the meaning of the requirement thereto.
Further, the design rights are subject to exhaustion of rights. In this sense the purchaser of an article embodying a registered design will wield the right to use and then thereafter dispose of the article at will without incurring infringement charges. In other words, the exclusive rights of the design holder cease upon the sale of the registered design articles to third parties.
- Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775053007, or e-mail:email@example.com.