Why Are Semiconductor Layouts Treated Differently Under the IP Regime?

Introduction

An Integrated Circuit is a form of circuit in which various semiconductor devices like transistors, diodes etc. are connected in a pattern or layout in a tiny chip to carry out a specific function. Integrated circuits play a significant role in the advancement of technology, especially in electronics and information technology. Electronic devices that we ubiquitously use, like mobile phones, TV, computers etc. primarily function with the help of the installed chip(s). The layout of integrated circuits is the creation of the human mind and developing a new layout design requires an enormous investment in terms of both money and time. Technological innovation is happening at an exponential rate and the need of the hour is to protect the circuit designs.

The Semiconductor Integrated Circuits Layout Design Act was passed in the year 2000 in conformity with the TRIPS agreement. SICLDA 2020 protects the layout design of the integrated circuits and thus provide protection to the basic circuit design rather than the chip, which is easier to pirate. It was in the US the need for separate legislation was first recognized and a treaty on intellectual property for integrated circuits, also known as Washington treaty or IPIC treaty was adopted in 1989. WTO while drawing up the TRIPS agreement included Articles 35-38 in Section 6 to provide protection of layout design of integrated circuits.

green and black circuit board

A Brief Synopsis of the Act

Layout designs of an integrated circuit are different from industrial design in which only the placement of each element within the circuit is important rather than the physical appearance. The act provides protection for the integrated circuit layout by a registration process.  A Registrar, who has both administrative and legal powers and other officers, is appointed by the central government and an appellate board is constituted.

Section 6 provides for a Register of Layout-Designs to be maintained at the head office. The register, every notice of opposition to the registration of layout design, counter statement and any affidavit filed before the Registrar; and the indexes and other such documents as specified by the central government are open to the public introspection. Section 7 of the act lays down the grounds for Prohibition of Registration such as:

  1. Layout designs that are not original
  2. Which has been commercially exploited in India or a convention country
  3. Which is not inherently distinctive
  4. Which is not inherently capable of being distinguishable from any other registered layout-design.

An original layout design is one in which it is the result of its creator’s own intellectual efforts and the right of registration to such layout-design belongs to the person who commissioned the work or the employer. In order to be registrable under the act, a layout-design needs to be inherently distinctive from any other registered layout-design.

If integrated circuits are not sold, offered or exhibited for sale for more than 2 years in India or a convention country, it shall be treated as “not commercially exploited.” If any question arises regarding the same, the matter will be referred to the appellate board and the decision of the board will be final. 

According to Section 8, the creator of layout-design shall file the application in the field office of the registry within whose territorial limit the place of business in India or the address of service in India (when business is carried out outside India) of the applicant is situated. The Registrar can withdraw the application in case it is found prohibited under Section 7. The application is advertised after the acceptance and Section 11 enables a person to make opposition to the Registrar.

In case the application is not opposed or the opposition has been held in favor of the applicant, the application is registered and a certificate is issued with the seal of the registry. The registration period is 10 years counted from the day of filing the application or first commercial exploitation in any country whichever is earlier. A person who is entitled to a registered layout-design by assignment or transmission becomes a registered proprietor, has exclusive right to use it and obtains relief in respect of infringement. Section 18 provides for acts which do and do not cause infringement. In case of infringement, Section 56 lays down the punishment for such offense as imprisonment which may extend to 3 years or with a fine which shall not be less than Rs. 5000/- or with both.

Section 51 empowers the Appellate board to permit the use of registered layout-design under certain conditions that the board seems fit and the government has to pay a royalty to the registered Proprietor.

Why Do Layout-Designs Rate a Sui Generis Act?

Integrated circuits are a part of every gadget we use, which makes their impact on essential day to day lives tremendous. Their importance in the field of technology and the threat of piracy aroused a need to protect them. Separate legislation was created for the protection of integrated circuit layout-design in India because:

  • Integrated circuits consist of hundreds or thousands of semiconductor devices and under patents, each of them is patentable. Hence, an application under patent law would run into hundreds of pages
  • The integrated circuit layouts were not covered in varied intellectual property protections that were in use and design patent protection was inapplicable to integrated circuits as it covered only ornamental rather than functional aspects.
  • The layout of an integrated circuit can be easily pirated by mapping the components used and tracing their location. Hence trade secrets law is not applicable as well.

As adequate chip protection was not provided under patent, copyright or trade secret law, the government came up with a sui-generis law. The designing of integrated circuits and their viability requires intensive capital investment and it is vital to provide legal protection against infringement. It is imperative to provide a safe and secure environment to carry out technological advancements in the field of Integrated circuits layout design, for the development of the hardware sector in our country and catch up with the big revolution in the electronics industry around the world.

Author: Kochurani James, Legal Intern at PA Legal.

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