Layout-Designs Of Integrated Circuits – Intellectual Property Rights Laws and Practices Important Questions
Question 1.
(a) Looking at the growth of mobile phones and other electronic devices in the Indian market an Indian firm is interested to make investments to 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 for signing the technology agreement for IC. Advise the American company how the agreement can be signed between the American company and Indian firm and can American company apply to cancel the registration of Indian firm as a registered user of layout design in future if the American Company is dissatisfied with an Indian firm.
Answer:
When 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. 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 agreement in writing, entered into between them with regard to 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 as a registered user of layout design on any of the following grounds:
(1) Registered user has not used the layout design in accordance with the agreement;
(2) 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;
(3)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;
(4) 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;
(5) 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;
(6) 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 the registered user to the registered proprietor and each registered user (not being the applicant)of the layout design. Although before canceling registration, the registered proprietor shall be given a reasonable opportunity of being heard.
Question 2.
Write a brief note on the 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, 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 infringed layout design is entitled to immunity from infringement under this Act. Use of 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 which is identical to a registered layout design, then, such act shall not constitute an infringement of the registered layout design.
Question 3.
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. A layout design that is not original is prohibited. Similarly, the registration of layout design which has been commercially exploited anywhere in India or a convention country has been prohibited. A 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 of 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 l&yout 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 4.
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 at Washington, D.C., in 1989, which adopted a Treaty on Intellectual Property in Respect of Integrated Circuits, also called the Washington Treaty or I PIC 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 IP1C 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 IPC 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 interconnections 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 5.
Mention the situations in which Registrar has powers to cancel the registration under 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:
(1) the Registered User has not used the layout design in accordance with the agreement;
(2) 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;
(3) 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;
(4) 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;
(5) 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;
(6) 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 the registered user to the registered proprietor and each registered user (not being the applicant) of the layout design. However, before canceling of registration, the registered proprietor
Question 6.
Explain the procedure of assignment and transmission under 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.
CS Professional Intellectual Property Rights Laws and Practices Notes