Semiconductor Integrated circuit layout design: An Intellectual property protection in Indian Regime

Abstract

The growth and development in the world has far ago created a new stream to be considered as property i.e. the intellectual property. These properties are created by human who possess intelligence, creativity, intellect, etc which ultimately provide them the right in respect of such property, which is furthermore protected by the government. The starting point of this intellectual property was the copyrights, trademarks and the patents then came legislations covering industrial designs and geographical indications as important intellectual properties. With the growing technology and development and with the growing competition to become a high-tech country, a revolution in the field of Information Technology arrived. With each passing day, the technological innovation started expanding. The invention of computers and internet had cleared the power of technology. Thereafter the invention of integrated circuit became one of those elements which helped the world to turn into a technological world. With the advancement of this information technology, a new branch in the field of intellectual property flourished, called as the Layout-Design or the of the semiconductor integrated circuits. These integrated circuits improved the functional performance of every gadget, in which they were being attached. Due to their low cost, small size and less weight these circuits became a trend in the IT Industries. The protection by considering the integrated circuit as an intellectual property became necessary. By complying with the revolution Indian government also enacted a sui generis legislation for the protection of integrated circuit layout design (i.e. Semi Conductor Integrated Circuits Layout-designs of Act 2000). In this paper the author will deal with the development of integrated circuits layout design laws at international level, and the article will also provide an intensive research on- why the Indian government has not inserted protection of layout design in any existing IP acts and adapted sui generis legislation for the protection of integrated circuit layout design. Nowadays Integrated circuits are used in virtually all electronic equipment today and have revolutionized the world of electronics like computers, mobile phones, and other digital home appliances are now inextricable parts of the structure of modern societies which consist of integrated circuits. The advancements in technology has created a path for integrated circuit and layout design which needs to be monitored carefully as it can also be pirated, just like the other IPs.

STATEMENT OF PROBLEM:

Integrated circuits are used in virtually all electronic equipment today and have revolutionized the world of electronics. computers, mobile phones, and other digital home appliances are now inextricable parts of the structure of modern societies. It became possible due to the low cost, small size and less weight of integrated circuits. These integrated circuits improved the functional performance of every gadget, in which they were being attached. Hence when these IC became so much important the need for protecting them aroused. The main problem here which is also common to all IPs is the problem of piracy, as it is clear that the structure and components of integrated circuits are not protected, but the layout design is protected. Due to this the piracy of the manufacturing process of IC increased.

 

RATIONALE:

The invention of integrated circuit became one of those elements which helped the world to turn into a technological world. With the advancement of this information technology, a new branch in the field of intellectual property flourished, called as the Layout-Design or the of the semiconductor integrated circuits. Thus, this project aims to analyse the development of integrated circuits which led to its protection under IPR regime, due to which a sui generis act for the same has been created. It is important to study the nature of IC from both internal and external angles in order to seek protection under the Indian legislation (i.e. Semi Conductor Integrated Circuits Layout-designs of Act 2000)

 

OBJECTIVES:

  • To explain the evolution of integrated circuits
  • To consider the global development of semiconductor integrated circuits layout design.
  • To explain the layout protection
  • To determine the registration criteria for layout design protection.
  • To consider the situations in which compulsory licence in case of lay out design will be granted.

REVIEW OF LITERATURE: The sources of data are secondary, which is taken help from library, books journals and internet.

Bhandari. M. K., “Law Relating to Intellectual Property Rights” – The authors explain about the evolution of integrated circuit layout design protection under the IPR regime and the criteria for compulsory licensing.

CONCEPT AND VARIABLE OF STUDY:

Semiconductor Integrated Circuit: Semiconductor Integrated Circuit means a product having transistors and other circuitry elements, which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function.

 

Layout-design: The layout-design of a semiconductor integrated circuit means a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in semiconductor integrated circuits.

 

NATURE AND KIND OF RESEARCH:

The way of research is – Secondary research

The type of research is – Qualitative research.

This project is based on doctrinal research i.e. secondary research as this research is conducted on the basis of data collected by source, nor by self experiment. As the data for this project is collected by books, web and other indirect resources, this project strictly adopt the concept of secondary research methodology. The doctrinal research methodology would be used in analysing the international protection provided to different variety of integrated circuits and layout design throughout the globe.

Introduction

With each passing day, the technological innovation is expanding. The invention of computers and internet had cleared the power of technology. An integrated circuit is one of those elements which helped in the world turn into a technological world.

The term integrated circuit seems to be very confusing for a layman. In simple words the integrated circuit looks like a chip from outside, and inside this chip there is a composition of various small elements (resistors, transistors, capacitors, etc). The base in which these small particles are kept and connected to each other is known as semiconductor. These all elements are stuffed into a tiny chip, which is thereafter connected to any other device, which will use this integrated circuit. Let me explain the above statement by taking an example of earphones. The earphone can be considered as an integrated circuit, which has a pin in its end, and which will be ultimately connected to a mobile phone or iPod, in order to complete the common goal i.e. listening music. So hence we can consider that, an integrated circuit is a collection of electronic components all stuffed into a tiny chip, and connected together to achieve a common goal.

It is not important to study the whole formation of integrated circuits along with its elements. For the purpose of protection, these integrated circuits are not protected but the various designs, in which these integrated circuits are formed is protected. The layout design is protected because any one can do the piracy of an integrated circuit by doing an intensive study in the components involved in it, but the creation of design of such integrated circuit is a part of human creation, hence it cannot be pirated. IC’s are creations of the human mind just like other forms of IPRs. A lot of capital commitment, research & development, time, human resources and coordination are needed to come up with IC creations. IC’s can be copied just by making replicas of each layer on the IC. For this reason it became necessary to protect the topography (layout design) of IC’s to protect the intellect and the resources that would have been spent in coming up with such a component.

Integrated circuits are used in virtually all electronic equipment today and have revolutionized the world of electronics. computers, mobile phones, and other digital home appliances  are now inextricable parts of the structure of modern societies. It became possible due to the low cost, small size and less weight of integrated circuits. These integrated circuits improved the functional performance of every gadget, in which they were being attached.

Evolution of integrated circuits layout design protection

The evolution for protecting intellectual property rights started from USA, because this technology was first invented in USA in the year 1950 by Jack Kilby and Robert Noyce. The first consumer to this new invention was the US Air Force, after using the integrated circuit the USA has considered the importance of such chip. After such an invention the US govt. has clearly forecasted the need of a constant law for integrated circuits. Hence, A diplomatic conference was held at Washington,D.C., in 1989, which adopted a treaty on Intellectual property in respect to integrated circuit , also called the Washington Treaty or IPIC Treaty. The Treaty, signed at Washington on May 26, 1989, was open to States Members of WIPO or the united nations and to intergovernmental organizations meeting certain criteria. The treaty gives freedom to each member country to implement its obligation of protecting IC layout design either through any special law or existing IPR laws. The USA was the first among all to provide protection to such chip. It was the first ever legislation to protect the integrated circuit and semi conductor.

After the establishment of this act by the US the whole world became very keen to give protection to such integrated circuits and foster the technology. By seeing this, the world intellectual property organisation (WIPO) considered the importance of integrated circuit and layout design and decided to establish a treaty governing the same at an international level.

The WIPO by laying down the standards for protection of Integrated circuits layout design introduced a treaty called treaty on Intellectual property in respect to integrated circuit which was popularly known as the Washington treaty on the integrated circuit. But the treaty failed due to resistance from US and Japan.

The next attempt at international level was done by the WTO during the drawing up of the TRIPs agreement. International Treaty on intellectual property in respect of integrated circuits, articles 35 to 38 in section 6 of the TRIPs provides for protection of layout design of integrated circuit at global level. The IPIC Treaty has been incorporated in TRIPs and accepted as model treaty for granting legal protection.

After 16 years India has also realised the importance of legal protection to layout design and enacted law in the year 2000. India being a signatory of the WTO also passed an Act in conformity with the TRIPS agreement called the Semiconductor Integrated Circuits Layout-Design Act (SICLDA) passed in the year 2000.

Semiconductor Integrated Circuits Layout-Design Act, 2000 (SICLDA)

The law that protects layout-designs of integrated circuits in India is the Semi Conductor Integrated Circuits Layout-designs of Act 2000. This act provides protection to layout design of any integrated circuit.

 

The Indian government created separate legislation and applied the sui generis mode for protecting integrated circuit layout design because:

  • Integrated circuits comprises of numerous building blocks, each block being patentable. Since an integrated circuit contains hundreds or thousands of semiconductor devices, a claim to an integrated circuit would have to cover hundreds or thousands of individual elements. Consequently, a patent claim that attempts to describe an entire integrated circuit may be hundreds of pages long. Hence it was not possible to patent such invention.
  • Other forms of existing intellectual property protection are also inapplicable to integrated circuit layouts. Design patents protect the ornamental, but not the functional, aspects of an article of manufacture described in its drawings. Since integrated circuit layout is more functional than ornamental, design patent protection is generally inapplicable to integrated circuits.
  • Finally, trade secret law cannot be used to protect most integrated circuits because an integrated circuit layout may be reverse-engineered.

The layout of transistors on the semiconductor integrated circuit or topography of transistors on the integrated circuit determines the size of the integrated circuit as well as its processing power. That is why the layout design of transistors constitutes such an important and unique form of intellectual property fundamentally different from other forms of intellectual property like copyrights, trademarks, patents and industrial designs. Given that patent, copyright, and trade secret law cannot adequately protect integrated circuit design, hence an exclusive protection for semiconductor integrated circuits layout-design has became necessary to the semiconductor industry.

Need For Sui Generis Protection:

The need for a sui generis form of protection developed primarily as a result of chip piracy, which threatened to undercut the vitality of the semiconductor industry. Chip pirates could sell identical chips for lower prices than could the companies that originally designed them. This caused legitimate companies that engaged in chip research and development to cut prices to compete with pirated chips, which deprived legitimate companies of the funds needed to carry out further research and development to build the next generation of chips. Legitimate companies could not get adequate chip protection under patent, copyright, or trade secret law, so a sui generis form of protection was provided.

Thus a separate legislation for the same was created by the Indian government. The semiconductor Integrated Circuits Layout Design Act, 2000, provides protection for semiconductor IC layout designs. SICLD Act is a sui-generis (one of its kind) specifically meant for protecting IPR relating to Layout-Design (Topographies) of Semiconductor Integrated Circuit. “Semiconductor Integrated circuits Layout- Design Act 2000” is a supplement act to designs. It fulfils the obligations of TRIPS agreement (Art.35 to 38) regarding the protection of semiconductor integrated circuits layout- designs.

Salient features of Semiconductor Integrated Circuits Layout-Design Act (SICLDA), 2000

  • There is protection of semiconductor integrated circuits layout and designs by a registration process.
  • The act defines semiconductor integrated circuit and layout design (which is different from industrial design)
  • There is a mechanism for distinguishing which layout designs can be protected.
  • There are rules to prohibit registration of layout designs which are not original or which have been commercially exploited.
  • The procedure regarding assignment and transmission of registered layout design is provides.
  • Protection of 10 years period is provided to layout designs.
  • Provisions regarding infringement and evidence of validity are mentioned.
  • There are provisions for determining payment of royalty for registered layout designs in case of innocent or unintentional infringement.
  • Penalties in the form of imprisonment and fine are imposed for wilful infringement and other offences in the Act.
  • The Registrar is appointed for the purpose of administration and the Appellate Board is established for facilitating the legal objective.

What is protected under the act?

A layout design expressed in any manner, which is original, which has not been commercially exploited for more than 2 years from the date of application for the registration, which is inherently distinctive and capable of being distinguishable from any other registered layout design, is protected or registered under the Act.

 

Who can apply for protection under the act?

The application for the protection of layout design can be made by the person who claims to be:

  • The creator of the layout design, or his legal representative,
  • A person registered in the prescribed manner as a layout design agent or a person in the sole and regular employment of the principal, in writing to the registrar in the prescribed manner.

The application can be filed either alone or jointly. The application has to be filed within the territorial limits (i.e. within India)

 

Location for protection:

Semiconductor Integrated Circuits Layout-Design Registry of India is currently located in New Delhi, and comes under the purview of DIT, Ministry of Communications and Information Technology. It protects the registered proprietor and registered user within the territory of India. Furthermore, the central government has established a layout design appellate board to exercise the jurisdiction, powers and authorities conferred on it by the act.

 

Criteria for Registration of a Chip Layout Design

  • Original,
  • Distinctive and
  • Capable of distinguishing from any other lay-out design.

Note:  Only the Layout-Design which essentially is the mask layout- floor planning of the integrated circuits can be registered under the SICLD Act 2000 and not the other information like any idea, procedure, process, system, programme stored in the integrated circuit, method of operation etc.

 

Layout-designs are prohibited from registration under the Act if they are as follows:

  • Not original;
  • Have been commercially exploited anywhere in India or in a Convention country i.e. any country that the Government of India notifies in the Official Gazette for the fulfilment of a treaty, convention or an arrangement with any country outside India and which affords to citizens of India similar privileges as are granted to its own citizens;
  • Not inherently distinctive;
  • Not inherently capable of being distinguishable from any other registered layout-design.

Procedure for registration

  • Filing of application in writing to the registrar in the office of SICLD registry in a prescribed form along with 3 sets of drawings produced to the plotter which describes the layout design and 3 sets of photograph of masks used for the fabrication of the semiconductor integrated circuits by using of the layout design or drawings which describes the pattern of such masks.
  • Acceptance of the application with acknowledgement by way of returning one copy of the application. The registrar can also withdraw the acceptance if the application is found to be prohibited for registration.
  • The application is advertised in a prescribed manner within 14 days of acceptance of layout design application. If any opposition is found to the registration, then a notice is sent to the registrar in the prescribed manner within 3 months from the date of advertisement. The registrar can call for evidences to be produced by both the parties and finally give his decision.
  • If the application is not opposed or the opposition has been decided in favour of the applicant, the registrar shall register the said layout design in the register of layout design and also issue a certificate sealed with the seal of the SICLD Registry.

Duration of Registration and protection

The registration of the layout design shall be only for the period of 10 years counted from the date of filing an application for registration or from the date of first commercial exploitation anywhere in any country, (whichever is earlier).

 

Exclusive Right to the Registered Proprietor

The registration of the layout design gives to the registered proprietor of the layout design the exclusive right to the use of the layout design and to obtain relief in respect of infringement. This right shall be available to the registered proprietor of that layout design irrespective of the fact as to whether the layout design is incorporated in an article or not.

 

Registered User

A person may be registered as a registered user of the layout design when the registered proprietor and the proposed registered user apply jointly in writing to the Registrar. The application shall accompany the agreement in writing or its authenticated copy, entered between the registered proprietor and registered user. The registered proprietor also has to submit an affidavit to the satisfaction of the Registrar.

 

Assignment and Transmission

A person who becomes entitled by assignment or transmission to a registered layout design shall apply to the Registrar in the prescribed manner to registered title. The Registrar on the proof of his title to his satisfaction register him as the proprietor of the layout design.

 

Protection against Infringement

The act of reproducing, selling, importing and distributing of integrated circuit layout design for commercial purposes constitutes infringement. Where such act is performed for the purposes of scientific evaluation, analysis, research or teaching shall not constitute the act of infringement.

Any person who commits infringement shall be punishable with imprisonment for a term, which may extend to 3 years, or with fine which shall not be less than fifty thousand rupees but which may extend to ten lakh rupees, or with both.

 

Registrar- The Adjudicating Authority

The Government of India appoints a person to be known as a registrar of the SICLD. He has both administrative and legal powers. Any person aggrieved by an order or decision of the Registrar may file an appeal to the Layout Design Appellate Board. The procedure and powers of the Appellate Board are that of a civil court as given under the Civil Procedure Code, 1908. If any person is not satisfied by any decision or order of the Appellate Board may file an appeal to the High Court within prescribed period and in a prescribed manner.

Compulsory licences

Section 51 of the act empowers the appellant board to permit the use of registered layout design. For such compulsory licensing the government has to pay the royalty to registered proprietor of such layout design.

The permission shall only be provided in following conditions:

  • The use of protected layout design should be for not commercial purpose.
  • The permission to use the registered layout design is provided in national emergency case or public urgency cases.
  • The permission to use such protected layout design shall be for a limited period.
  • The permission given to any person to use such protected layout design shall not be assignable or transmissible.

Conclusion

The world is developing day by day and such development is sometimes started by the already developed nations like USA. The technological invention of integrated circuits pushed USA one step ahead from other countries in the race of advancement and development. It became one of the major factor because of which USA is a developed nation today. In today’s dynamic and competitive environment, IP rights are key elements needed to maintain an edge in the market. It is crucial for the countries to understand what can be protected and how. With the growing technology, development and competition to become a high-tech country, a revolution in the field of Information Technology arrived in India also. With the advancement of this information technology, a new branch in the field of intellectual property flourished, called as the Layout-Design or the of the semiconductor integrated circuits. The semiconductor integrated circuit is an integral part of every electronic gadget, computer chips, etc. In complying with this need, the Indian government enacted the Semiconductor Integrated Circuits Layout-Design Act, 2000 (SICLDA). This act provides protection to layout design of an integrated circuit. In this act layout design is protected because any one can do the piracy of an integrated circuit by doing an intensive study of the components involved in the integrated circuits, but the creation of layout design of such integrated circuit is a part of human creation, hence it cannot be pirated. This act provided a relief to the inventors in this field as now their inventions and their rights will be protected by the government itself.

 

 

 

 

REFERENCES

Books Referred:

  • V K Ahuja, Law relating to intellectual property rights, Lexis Nexis.
  • M K Bhandari, Law relating to intellectual property rights, Central Law Publication.

Websites Referred:

 

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