Integrated Circuit Layout Design Protection Series: Part 2September 6, 2023

A diplomatic conference was held in 1989 in Washington, D.C. The diplomats in attendance were representatives of member states of the United Nations (UN) World Intellectual Property Organization (WIPO) or representatives of intergovernmental organizations meeting certain criteria. The diplomats were there to consider whether their Member nations were interested in offering additional protections for integrated circuit designs similar to the U.S. Semiconductor Chip Protection Act of 1984, the original development of which is discussed in Part 1 of this Series.

After spirited discussion, the diplomats adopted a Treaty on Intellectual Property in Respect of Integrated Circuits (“IPIC”), also called the Washington Treaty or IPIC Treaty. The IPIC Treaty, signed at Washington on May 26, 1989 was open to member states of the United Nations (UN) World Intellectual Property Organization (WIPO) and to intergovernmental organizations meeting certain criteria.

Under the IPIC Treaty, the diplomats determined each Contracting Party is obliged to secure, throughout its territory, exclusive rights in layout-designs (topographies) of integrated circuits, whether or not the integrated circuit concerned is incorporated in an article. Such obligation applies to layout-designs that are original in the sense that they are the result of their creators’ own intellectual effort and are not commonplace among creators of layout designs and manufacturers of integrated circuits at the time of their creation.

The Contracting Parties must, as a minimum, consider the following acts to be unlawful if performed without the authorization of the holder of the right: the reproduction of the lay-out design, and the importation, sale or other distribution for commercial purposes of the layout-design or an integrated circuit in which the layout-design is incorporated. However, certain acts may be freely performed for private purposes or for the sole purpose of evaluation, analysis, research or teaching.

The Treaty has since been incorporated by reference into the TRIPS Agreement of the World Trade Organization (WTO) with the following modifications: (i) the term of protection is at least ten (rather than eight) years from the date of filing an application or of the first commercial exploitation in the world; (ii) Members may provide a term of protection of up to fifteen years from the creation of the layout-design; (iii) the exclusive right of the right-holder extends also to articles incorporating integrated circuits in which a protected layout-design is incorporated, in so far as it continues to contain an unlawfully reproduced layout-design; and (iv) the circumstances in which layout-designs may be used without the consent of right-holders are more restricted, with the caveat that certain acts engaged in unknowingly do not constitute infringement.

Specifically, TRIPS governs: “Members agree to provide protection to the layout-designs (topographies) of integrated circuits.” Specifically, 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 inter-connections are integrally formed in and/or on a piece of material and which is intended to perform an electronic function. A ‘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.

Protection of circuit layout design legislation therefore exists across the globe, and mask work exclusive rights were first granted in the United States by the Semiconductor Chip Protection Act of 1984. The extent of these exclusive rights, how to obtain them, and why they are effective in preventing others from copying novel designs of integrated circuits will be discussed in the Part 3 of this Series.

Regarding the rest of the world, equivalent legislation exists in much of Asia and Australasia, including but not limited to: Australia (which “refers to mask works as ‘eligible layouts’ or ELs”; India (by way of “the Semiconductor Integrated Circuits Layout Design Act, 2000”); and Hong Kong. Japan relies on “The Act Concerning the Circuit Layout of a Semiconductor Integrated Circuit” to provide similar protections. In North America, Canada provides similar rights under the Integrated Circuit Topography Act of 1990. In Europe, the EU provides a sui generis design right to protect the design of materials by way of Directive 87/54/EEC. The Directive is effective in all member states. European countries that are not member states must pass their own individual laws if protection of the design of integrated circuit is specifically intended. For example, Switzerland passed the “Topographies Act of 1992” to address protections for such designs. In Africa, Tunisia adopted “Law No. 2001-20 of February 6, 2001, on the Protection of the Layout-designs of Integrated Circuits”. In South America, Brazil enacted Law No. 11484, of 2007 to regulate the protection and registration of integrated circuit topography. A sui generis design right for the design integrated circuits is therefore available in at least one country located on each of the World’s continents, except for Antarctica!

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.