Integrated Circuit Layout Design Protection Series: Part 1August 30, 2023

Did you know that layout designs (topographies) of integrated circuits are a separate field in the protection of Intellectual Property (“IP”)? Most Americans understand IP to be classified within one of patents, trademarks, copyrights, and trade secrets, yet this is not always how all countries choose to classify all IP rights. Another form of protection is available for a two or three-dimensional layout or topography of an integrated circuit (IC or “chip”), i.e., the arrangement on a chip of semiconductor devices such as transistors and passive electronic components such as resistors and interconnections. In the United States, the layout is called a “mask work” because, in photolithographic processes, the multiple etched layers within actual ICs are each created using a mask, called the photomask, to permit or block the light at specific locations, sometimes for hundreds of chips on a wafer simultaneously.

The first integrated circuits were patented by Robert Noyce in 1961, see U.S. Patent No. 2,981,877, and Jack Kilby in 1964, see U.S. Patent No. 3,138,743. These technologies were eligible for utility patent protection because they contributed substantial technical contributions to the country’s understanding of how to build circuits better.

Transistors had become commonplace in everything from radios to phones to computers. Transistors were small, but not small enough. Thus, scientists and engineers like Noyce and Kilby wanted to make the entire circuit a single unit, including the transistors, the wires, and all other parts. The single unit later became the silicon-based “Solid circuit” developed by Kilby and Texas Instruments. While Kilby had hammered out the details of making individual components, Noyce and the small Fairchild Semiconductor startup conceived of “unitary circuits,” which better connected each of the components.

Kilby’s and Noyce’s contributions were so revolutionary they formed the foundation of the entire integrated circuit industry we know today, where many new designs for integrated circuits are developed daily. Yet, because of the functional nature of these new mask geometries, these designs are not effectively protected under copyright laws (except perhaps as decorative art), nor are they effectively protected under design patent laws. Similarly, not all new designs for integrated circuits are protectable even with a utility patent. Often, the new arrangements are simply a matter of “design choice”, i.e., a mere rearrangement of known parts. If you were applying for a utility patent, the USPTO would likely contend then, that these integrated circuits do not function differently enough compared to other known integrated circuits so as to meet the “nonobvious” requirement for patentability.

Eventually, integrated circuit manufacturers became frustrated with the limited IP protections afforded to them. In response, many governments have been granting copyright-like exclusive rights conferring short time-limited exclusivity to reproduction of a particular layout. The extent of these international discussions is the subject of Part 2 of this Series, while the extent of the resultant Intellectual Property right is the subject of Part 3 of this Series.

Gregory Lars Gunnerson is an Intellectual Property Attorney in the Mechanical and Electrical Patent Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Lars directly via email at gregory.gunnerson@ipmvs.com.