Copyright Act – Layout Designs Of Integrated Circuits Question and Answers

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Copyright Act – Layout Designs Of Integrated Circuits

Question 1. Looking at the growth of mobile phones and other electronic devices in the Indian market an Indian firm is interested in investing in market-integrated circuits in India. The problem is the firm does not have the technology to manufacture IC (Integrated Circuits) therefore the Indian firm is negotiating with an American technology company to sign the technology agreement for IC. Advise the American company how the agreement can be signed between the American company and the Indian firm and whether can American company apply to cancel the registration of the Indian firm as a registered user of layout design in the future if the American Company is dissatisfied with the Indian firm.
Answer:

When a registered layout design is intended to be allowed to be used by some other person, then such person is required to be registered with the Registrar as a registered user.

The registered proprietor and the proposed registered user shall have to make a joint application in writing to the Registrar in a prescribed manner along with an agreement in writing, entered into between them with regard to the use of layout design showing particulars of the relationship, existing or proposed, including the degree of control by the proprietor over the permitted use which this relationship will confer.

The particulars should also clarify whether the proposed registered user shall be the sole registered user and mention the place and duration of the permitted use. After getting the compliance of requirements under the Act, the Registrar registers the proposed registered user.

  • The Registrar has the powers under the Act to cancel the registration registered user of layout design on any of the following grounds:A registered user has not used the layout design in accordance with the agreement;
  • The proprietor or disclose some material facts at the time of application which would have an adverse bearing on the registration of the registered user;
  • The circumstances have changed since the date of registration in such a way that at the date of such application for cancellation they would not have justified registration of the registered user;
  • That the registration ought not to have been effected having regard to right vested in the applicant by a contract in the performance of which he is interested;
  • Registration may be canceled by the Registrar of his motion or on the application in writing by any person on the ground that any stipulation in the agreement between the registered proprietor and the registered user regarding the topographical dimensions of the layout design is either not being enforced or is not being complied with;
  • Registration may be canceled by the Registrar if the layout design is no longer registered.

The Registrar is required to issue a notice in respect of every application received for cancellation of registration of a registered user to the registered proprietor and each registered user (not the applicant)of the layout design. However, before canceling registration, the registered proprietor shall be given a reasonable opportunity to be heard.

Question 2. Explain in brief the conditions and procedure for registration of Layout-Design of Integrated Circuits under the Semiconductor Integrated Circuits Layout Design Act, 2000.
Answer:

Layout Designs (topographies) of Integrated Circuits is a subject in the field of protection of Intellectual Property. Integrated circuits which are commonly known as ‘chips’ or ‘microchips are 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 compliance with the TRIPS Agreement, India has enacted the Semiconductor Integrated Circuits Layout- Designs Act, 2000 in order to provide protection to layout designs of integrated circuits. The Act defines “Layout Design” to mean a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit.

Conditions and Procedure for Registration Acceptance of Application: Any person who wants to register his layout design is required to apply in writing to the Registrar Semiconductor Integrated Circuits Layout-Design Registry in the concerned modifications, as he may consider necessary.

Territorial jurisdiction, as per the procedure prescribed in the SICLD Act, 2000. The Registrar after scrutiny may refuse the application or may accept it absolutely or with amendments or modifications, as he may consider necessary. Layout designs are registered if they are

  • Original,
  • Inherently distinctive,
  • Capable of being distinguishable from any other registered layout design and

If they have not been commercially exploited for more than two years before the date of application for registration”. Thus, it is observed that the act requires distinction rather than novelty for the purpose of registration. A layout design is a combination of elements and interconnection that are commonly known amongst creators of layout designs and manufacturers of semiconductor integrated circuits.

  • The layout designs and thereby only considered original if the combination is a result of the creator’s own intellectual abilities and efforts.
  • The SICLD Act, of 2000 prohibits the registration of certain Layout designs. Layout design that is not original is prohibited. Similarly, the registration of layout design that has been commercially exploited anywhere in India or a convention country has been prohibited.
  • Layout design that is not inherently distinctive or which is not inherently capable of being distinguishable from any other registered layout design also cannot be registered.
  • The Act, however, provides that a layout design that has been commercially exploited for not more than two years from the date on which an application for its registration has been filed either in India or a convention country shall be considered as not having been commercially exploited.
  • According to the SICLD Act, 2000, layout design is to be considered original if it is the result of its creator’s intellectual efforts and is not commonly known to the creators of layout designs and manufacturers of semiconductor integrated circuits at the time of its creation.
  • The Act further provides that layout design consisting of such combination of elements and interconnections that are commonly known among creators of layout designs and manufacturers of semiconductor integrated circuits shall be considered as original if such combination taken as a whole is the result of its creator’s intellectual efforts.
  • Furthermore, this Act provides that where an original layout design has been created in the execution of a commission or a contract of employment, the right of registration to such layout design shall belong, in the absence of any contractual provision to the contrary, to the person who commissioned the work or to the employer.
  • As per provisions of the SICLD Act, 2000, the Registrar has the power to withdraw the acceptance of an application for registration (before registration of layout design) if it comes to his knowledge that the layout design is prohibited from registration under the provisions of this Act.
  • The Registrar may, however, provide the opportunity of being heard to the applicant if he so desires, before the withdrawal of the acceptance.
  • According to the SICLD Act, 2000, the Registrar shall register the layout design in the register, if the application has not been opposed within the prescribed time limit or the application has been opposed and the opposition has been decided for the applicant.
  • The date of making the application is considered to be the date of registration of layout- design. After registration, the Registrar issues a certificate of registration sealed with the seal of the Semiconductor Integrated Circuits Layout-Design Registry. Registration gives exclusive rights to the creator of the layout design for 10 years.
  • It enables him to exploit the creation commercially and in the case of infringement, get reliefs permitted under the Act.
  • Once the layout design is registered, the original registration and all subsequent assignments and transmissions of layout design are admissible as prima facie evidence of its validity.
  • It cannot be held invalid on the ground that it was not a registerable layout design except upon evidence of originality and if such evidence was not submitted to the Registrar before.

The Act confers all the powers of a civil court to the Registrar for the purposes of receiving evidence, administering oaths, enforcing the attendance of witnesses compelling the discovery and production of documents, and issuing commissions for examination the of witnesses. It can also refer disputes to the Appellate Board.

Practical Questions

Question 3. ABC Communications, a telecommunications company, is in the design phase of a new device that incorporates a cellphone, PDA MP3 player, GPS chip, and Internet capabilities. There is a concern that the new device may have nearly the same design as their competitor’s product, for which an application for registration of industrial design has already been submitted. A former intern, who is now employed by the competitor, is believed to have leaked information. Can ABC Communication apply for registration of the design of the new device under the Designs Act, of 2000? Give reasons in support of your answer.
Answer:

A design is capable of being registered only if it is new or original.

Novelty: A design shall be considered to be new when it has not been disclosed to the public, anywhere in India or in any other Country, by publication or by use, or in any other way, prior to the filing date or priority date. A design shall be considered new if it is significantly distinguishable from known designs or a combination of known designs. (Section 4 of the Design Act, 2000.)

Originality: Original in relation to a design, means

  • Originating from the author of the design,
  • Includes the cases, which though old in themselves yet are new in their application (Section2(g))

Section 5 of the Act provides that the Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in any country and which is not contrary to public order or morality register the design under the Act.

  • Every application for registration is required to be in the prescribed manner and accompanied by the prescribed fee. A design when registered shall be registered as of the date of the application for registration.
  • As per Section 7 of the Act, the Controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in the prescribed manner and the design be open to public inspection. Under Section 9 of the Design Act, the Controller grants a certificate of registration to the proprietor of the design when it is registered.
  • The important purpose of design Registration is to see that the artisan, creator, or originator of a design having aesthetic look is not deprived of his bona fide reward by others applying it to their goods.
  • The company who is not actual creator of design cannot apply for registration of design.
  • Therefore, going through above provisions of Design Act, ABC Communication can apply for registration of design of new device under the Designs Act, 2002 as competitor has just applied for registration of duplicated design which has not been registered.

During the examination, when ABC Communication is asked to clarify the status of its design with reference to an application filed by a competitor, it can submit proof that its own design is original and new and the competitor has stolen its design while in the stage of development.

Short Notes

Question 1 Write a brief note on infringement of layout design.
Answer:

Infringement of layout design: Only a registered proprietor of the layout design or a registered user can make use of the layout design. What will constitute the infringement of layout design has been explained in detail in the SICLD Act, 2000.

  • Under the Act, any person who infringes the layout design shall be liable to pay the proprietor of the registered layout design, a royalty to be determined by negotiation between the registered proprietor and that person or by the Appellate Board.
  • Such royalty is negotiated to keep in view the benefit that accrued to the person who has infringed the layout design as per the SICLD Act, 2000.
  • The users/purchaser of the infringed layout design is entitled to immunity from infringement under this Act.
  • Use of a registered layout design with the written consent of the registered proprietor of a registered layout design also shall not constitute infringement.

Also, where any person creates a layout design by application of independent intellect that is identical to a registered layout design, then, such act shall not constitute an infringement of the registered layout design.

Descriptive Questions

Question 1. Discuss the Procedure for Registration of Layout design under the Semi-Conductor Integrated Circuits Layout-Design Act, 2000.
Answer:

Conditions and Procedure for Registration:

Acceptance of Application:

  • Any person who wants to register his layout design is required to apply in writing to the Registrar Semiconductor Integrated Circuits Layout-Design Registry in the concerned territorial jurisdiction, as per the procedure prescribed in the SICLD Act, 2000.
  • The Registrar after scrutiny may refuse the application or may accept it absolutely or with amendments or modifications, as he may consider necessary.

Prohibition of Registration of Certain Layout-Designs:

The SiCLD Act, 2000 prohibits the registration of certain Layout designs. Layout design that is not original is prohibited.

  • Similarly, the registration of layout design that has been commercially exploited anywhere in India or a convention country has been prohibited.
  • Layout design that is not inherently distinctive or which is not inherently capable of being distinguishable from any other registered layout design also cannot be registered.
  • The Act, however, provides that a layout design that has been commercially exploited for not more than two years from the date on which an application for its registration has been filed either in India or a convention country shall be considered as not having been commercially exploited.

Withdrawal of Acceptance: As per provisions of the SICLD Act, 2000, the Registrar has the power to withdraw the acceptance of an application for registration (before registration of layout design) if it comes to his knowledge that the layout design is prohibited from registration under the provisions of this Act. The Registrar may, however, provide the opportunity of being heard to the applicant if he so desires, before the withdrawal of the acceptance.

Advertisement of Application: According to the SICLD Act, 2000, when an application for registration of a layout design has been accepted, the Registrar is bound to advertise the accepted application within fourteen days after the date of acceptance.

After the advertisement, the Registrar has the discretion to advertise the application again if the application has been corrected or is permitted to be amended under the Act and notify in the prescribed manner the correction or amendment made.

Opposition to Registration: Any person under the SICLD Act, 2000 can oppose the proposed registration of layout design. After an application for registration of a layout design has been accepted, any person can give notice in writing to the Registrar of his opposition, within three months from the date of advertisement or re-advertisement or within a further period not exceeding one month in the aggregate, (as may be allowed by the Registrar ) as per the procedure provided.

Question 2. Briefly discuss the position of International Law on Layout- Designs of Integrated Circuits.
Answer:

Layout- Designs of Integrated Circuits: International Law: A diplomatic conference was held in Washington, D.C., in 1989, which adopted a Treaty on Intellectual Property in Respect of Integrated Circuits, also called the Washington Treaty or IPIC Treaty.

  • The Treaty, signed in Washington on May 26, 1989, is open to States Members of WIPO or the United Nations and to inter-governmental organizations meeting certain criteria.
  • The Treaty has been incorporated by reference into the TRIPS Agreement of the World Trade Organization (WTO), subject to the following modifications: the term of protection is at least 10 (rather than eight) years from the date of filing an application or of the first commercial exploitation in the world, but Members may provide a term of protection of 15 years from the creation of the layout-design;

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; the circumstances in which layout designs may be used without the consent of right-holders are more restricted; certain acts engaged in unknowingly will not constitute infringement.

Article 35 of TRIPS in Relation to the IPIC Treaty states: Members agree to provide protection to the layout designs (topographies) of integrated circuits (referred to in this Agreement as “layout-designs”) in accordance with Articles 2 through 7 (other than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the Treaty on Intellectual Property in Respect of Integrated Circuits and, in addition, to comply with the following provisions.

Article 2 of the IPIC Treaty gives the following definitions: 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,

  • 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 …
  • Under the IPIC Treaty, 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.

Question 3. Mention the situations in which the Registrar has powers to cancel the registration under the Integrated Circuit Lay Out Designs Act, 2000.
Answer:

The Registrar has the powers under the Act to cancel the registration as a registered user of layout design on any of the following grounds:

  • A registered user has not used the layout design in accordance with the agreement;
  • The proprietor or the registered user misrepresented, or failed to disclose some material facts at the time of application which would have an adverse bearing on the registration of the registered user;
  • The circumstances have changed since the date of registration in such a way that at the date of such application for cancellation they would not have justified registration of the registered user;
  • That the registration ought not to have been effected having regard to right vested in the applicant by a contract in the performance of which he is interested;
  • Registration may be canceled by the Registrar of his motion or on the application in writing by any person on the ground that any stipulation in the agreement between the registered proprietor and the registered user regarding the topographical dimensions of the layout design is either not being enforced or is not being complied with;
  • Registration may be canceled by the Registrar if the layout design is no longer registered.
  • The Registrar is required to issue a notice in respect of every application received for cancellation of registration of a registered user to the registered proprietor and each registered user (not the applicant) of the layout design.

However, before canceling registration, the registered proprietor shall be given a reasonable opportunity to be heard.

Question 4. Explain the procedure of assignment and transmission under the Integrated Circuit Lay Out Designs Act, 2000.
Answer:

Assignment and Transmission. The proprietor of a registered layout design has powers under the Act to assign the layout design for any consideration.

  • The registered layout design may be transferred with or without goodwill.
  • However, the person who becomes entitled by assignment or transmission to a registered layout-design shall also have to register his title with the Registrar as per the procedure provided in the Act.

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