NEED OF SUI GENERIS LAW

Topography means layout designs that have been attached to a semiconductor, for example
circuits on Semiconductor chips.

Topography should be protected because firstly high capital investment is made on

developing a layout design and it is very easy to copy. Second there is a tremendous
economic significance. For example, in Taiwan whole economy depends on topography on
semiconductors but Indian conditions are different so a sui generis law was provided.

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.

Protection of ICC Layout designs owes its genesis to Section 6 Article 35 of the TRIPS
Agreement. This section is said to have endorsed the Washington Treaty. Protection to
semiconductor chips was first given in the US through Semiconductor Chip Protection Act
(SCPA) in 1984 and its impact was felt virtually throughout the world. Japan introduced
similar protection in 1985, viz., Japanese Circuit Layout Right Act (JCLRA). An EC
Directive, with implementing legislation in all Member States of the EU accelerated
international efforts resulting in the formulation of the 1989 Treaty on Intellectual Property in
respect of Integrated Circuits (IPIC Treaty) under the auspices of WIPO. The IPIC Treaty
was later made part of the TRIPS Agreement. TRIPS called for adherence to most of the
substantive provisions of the IPIC Treaty. As a member of TRIPS Agreement, India has
enacted the Semiconductor Integrated circuit layout-Design Act, 2000

NEED OF A SEPARATE LAW APART FROM PATENT AND

COPYRIGHT
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.

Copyright law protects expressions only. It uses lines and geometrical shapes only as
expressions. term period of copyright is very long. So copyright law is not suitable for
semiconductor. Indian patent law expressly says topography are not inventions. One would
not be able to satisfy novelty and non obviousness requirement that are substantive
requirements for patent law. Patent law does not reward development. It rewards inventions.

It cannot be protected under design act as design law protects patterns which are for visual
appeal. But topography performs functions and is not intended to create visual appeal. Also,
it is put inside a machine not outside.

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.

3 REQUIREMENTS OF SEMICONDUCTOR REGISTRATION

Protection under the Act exists only after the layout-design has been registered. Layout-
designs can be registered, if they are; (i) original, (ii) inherently distinctive, (iii) capable of
being distinguishable from any other registered layout-design and (iv) if they have not been
commercially exploited for more than two years before date of application for registration.
Thus, the Act does not require ‘novelty’ (as in patents) but ‘distinctiveness’ for the purpose of
registration.

Originality under copyright is lower than novality in patent law. Originality in semiconductor
law is different from copyright law. Section 7 clause 2 of the act define originality.
Originality in copyright law does not require intellectual effort but in the layout designs at it
requires the intellectual effort that are put in creating that. So the originality requirement in
layout design is a standard higher than originality requirement in copyright law but it is less
than Novality in patent law. The highest is the novality requirement in patent of then comes
the originality requirement in the layout design act and then comes the originality
requirement under the copyright act.

In The layout design act even if a person is taking commonly known (Commonplace)
elements but are putting intellectual effort to make a new combination which was not already
in existence then it is also originality. The original combination of elements which are not
original will also be original under layout design act.

In the case of Ocular Sciences Ltd v Aspect Vision Care Ltd10 attempt was made at
understanding what ‘commonplace’ meant. In the Patents Court, Mr Justice Laddie pointed
out that the word “commonplace” is not one previously used in UK law (here its meaning as
it appeared in the Copyright, Designs and Patents Act 1988 was in question) but derives from
the E C Directive on the legal protection of semiconductor topographies. Whilst not wanting
to paraphrase a word used in a statute, Laddie J liked counsel’s submission that any design
which is ‘trite, trivial, common-or-garden, hackneyed or of the type which would excite no
particular attention in those in the relevant art is likely to be commonplace’. However, and in
line with the semiconductor Directive, he confirmed that a design, which is made up of a
number of such features, need not necessarily itself be commonplace. For protection, the
combination must itself not be commonplace and this could be so even if the constituent parts
are trivial or mundane.

so the first requirement was originality then comes the second requirement of distinctiveness.
Distinctiveness layout design act is different from The trademark act. The function performed
by one layout design is different from other layout design aur is material used in one design is
different from other then they are distinctive. Section 7 clause 1 proviso defines
distinctiveness.
Then comes the requirement of commercial exploitation which is defined under section 2
clause e. "Commercial exploitation" in relation to the SICLD means to sell, lease, offer or
exhibit for sale or otherwise distribute such semiconductor integrated circuit for any
commercial purpose.

. Any act of leasing, selling, offering/exhibiting for sale, a layout-design for any commercial
purpose amounts to commercial exploitation. Distributing a layout-design for commercial
purposes (and not necessarily for monetary gain) too amounts to commercial exploitation.
Thus, the key test is that the activity must be for a commercial purpose. If a scientist was to
distribute a tube-light electronic ballast created by him, incorporating a new original layout-
design (which enables the tube-light to switch on without blinking, as fast as a bulb, and also
function at very low voltages), to fellow colleagues for personal use, it would not amount to
commercial exploitation. But if he were to sell it as a new product developed by him, it
would amount to commercial exploitation.

Even if commercial exploitation occurred then two years Grace period is provided for filling
the application of registration. Section 15 deals with the duration of registration which is 10
years. If commercial exploitation has not happened.. Commercial exploitation has happened
in 10 years time starts from the date of first commercial exploitation. In other words, A
period of 10 years counted from the date of filing an application for registration or from the
date of first commercial exploitation anywhere in India or in any convention country or
country specified by Government of India whichever is earlier.

So there are the following requirements originality, inherently distinctiveness and

commercial exploitation and commercial exploitation should not be greater than 2 years.
Long time period is not given because it is a fast moving industry and that design can
quickly become obsolete. Only original combination of already known element so it can be
made quickly than a new invention.

It is also to be noted that and registered trademark for unregistered copyright are protected
but in layout design and registered layout design had doesn't have any protection as per
section 16.
CASE LAW
Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1564-65 (Fed. Cir. 1992).
It held that infringement under the SCPA does not require that all parts of the accused chip be
copied. Specifically, mask works fixed in a chip were held to infringe a protected mask work
even though the infringing mask works were only eighty percent similar to the protected
mask work.

REGISTRATION PROCEDURE OF SEMICONDUCTOR IC &

LAYOUT DESIGN
Any person who need to get certificate of registration for electronic design or its
semiconductor IC need to file application u/s 8

1. Applicant must file application for registration to registrar within the territorial limits of
principal place of business of applicant stating name, address & description of proprietor.

2. Application must states the

a. Structure,

b. Technique and

c. Functionalities of the circuit

And must be different from other registered IC or layout design. However even if it
accompanies the registered layout design or combination of elements which are commonly
known among creators of layout design, if taken as a whole it can be considered original if
it's a result of creator's own intellectual efforts.

1. If the application is accepted by registrar but can be rejected on the following grounds
namely:

(i) Originality

(ii) Commercially exploited

(iii) Inherently distinctive

(iv) Distinguishable from other registered layout design

2. When the application is accepted, registrar than within 14 days from the date of
advertisement cause the same to be advertised.

3. On examination by registrar and with opposition if any within 3 month from the date of
advertisement will grant certificate of registration u/s 13 subject to certain conditions like
original, commercial exploitation and distinctiveness.

4. Certificate of registration is valid for 10 years from the date of filling of registration or
from the date of first commercial exploration whichever is earlier.

5. Joint authorship in layout design is not permitted but can be claimed if and only if

a. Both of the authors have put combined efforts in creation of design or

b. Intellectual efforts are difficult to distinguish.

6. Registration provide the right to registered creator of layout design to sue for infringement
or damages which otherwise is not permitted by law irrespective of the fact whether the
layout design is embedded in article or not.

7. Proprietor right to assign or transfer- A registered layout-design shall be assignable and

transmissible whether with or without the goodwill of the business concerned.

OR
The registration cycle includes

 Filing of application by the creator of the layout-design at the SICLD Registry.

 The acceptance of application.
 Registrar may accept, refuse the application or accept with some
modifications.
 The accepted applications shall be advertised within 14 days of acceptance.
 Any opposition to the advertisement can be filed within 3 months from the
date of advertisement.
 The counter-statement to the notice of opposition, if any, to be filed within 2
months from the date of receipt of copy of notice of opposition from the
Registrar.
 A copy of the counter statement provided to the opposing party.
 The Registrar may take hearing with the parities.
 The Registrar will decide on the originality of the layout-design and grant or
reject the application for registration based on the conclusions reached by
him.
 Aggrieved party can appeal to Appellate Board or in its absence Civil Court for
relief on any ruling of the Registrar.
EXCEPTIONS/ Defenes TO INFRINGEMENT UNDER
SECTION 18
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.
Section 17 confers rights on registration. S. 18 provides following cases which do not
constitute infringement.

 Educational purpose
S. 18(2): Notwithstanding anything contained in section 17, sub-section (1) or sub-section
(5), the performance of the act of reproduction referred to in clause (a) of sub-section (1),
where such act is performed for the limited purposes of scientific evaluation, analysis,
research or teaching, shall not constitute act of infringement within the meaning of that
clause. BARE ACT

Hence, any person may reproduce the layout-design “for the purposes of scientific evaluation,
analysis, research or teaching. This is similar to the fair dealing exception in copyright law.
This is a significant exception to the exclusive right of the registered-proprietor to reproduce
by any means the registered layout-design or any substantial portion of it.

 Reverse engineering
The Act also allows persons to ‘reverse-engineer’ layout-designs for the purpose of analysing
the layout-designs and incorporating the insights of their analysis into an original layout-
design of their own. Reverse engineering must ultimately result in a layout design which is
original.

S. 18(3) states that where a person, on the basis of scientific evaluation or analysis of a
registered layout-design, creates another layout-design which is original within the meaning
of sub-section (2) of section 7, that person shall have the right to incorporate such another
layout-design in a semiconductor integrated circuit or to perform any of the acts referred to in
sub-section (1) or sub-section (5) in respect of such another layout-design and such
incorporation or performance of any act shall not be regarded as infringement within the
meaning of sub-section (1). BARE ACT

Such a provision is considered to be justified, in accordance with Article 6(2)(b) of the IPIC
Treaty and the provisions in the TRIPS Agreement, as there is a need to encourage creativity
through the improvement of existing layout-designs. Moreover, to successfully enter an
integrated circuit market segment with a new product, the new entry must usually be
compatible with established products. However, the information needed to achieve
compatibility is often not publicly available. Thus, aspiring competitors must gather this
information another way. However, they must do so without infringing layout-design rights
under the Act.

Defence of innocence

S. 18(5) provides that where a person does not possess any knowledge or has no reasonable
ground to know while performing or directing to be performed such act in respect of such
semiconductor integrated circuit or article that it incorporated a registered layout-design, it
will not amount to infringement.

But, after the time when such person has received notice of such knowledge, if continues to
perform or directing to be performed such act then, he shall be liable to pay the proprietor of
the registered layout-design a sum by way of royalty. The amount shall be determined by
negotiation between registered proprietor of the registered layout-design and that person or
by the Appellate Board having regard to the benefit accrued to such person by performing or
directing to be performed such act. BARE ACT

Exception like section 18 class 5 is given because layout-design is not sold alone. It is put in
a product that whole product should not go wasted because of one chip. Also owner of layout
design would be interested in reality which can be given after selling.

Even if the person having absence of knowledge receive the knowledge of infringement later
on and he has an existing stock then he can sell that existing stock to dispose of the stock
Provided that he had to give some royality to the owner when he got knowledge.

Innocent purchaser

S. 18(6) provides that where any other person purchases a semiconductor integrated circuit
incorporating a registered layout-design or any article incorporating such a semiconductor
integrated circuit referred to in sub-section (5) from a person referred to in that sub-section,
then, such other person shall be entitled to the immunity from infringement in respect of that
semiconductor integrated circuit or article.

Defence of consent exception

Section 18(7). But consent should be written.

 Independent creation

S. 18(8) where any person by application of independent intellect has created a layout-design
which is identical to a registered layout-design, then, any act of such person in respect of the
layout-design so created shall not be the infringement of the registered layout-design.

Paper trail evidence can be brought by such an independent creator to prove that his creation
was an exercise of “intellectual efforts” and it was not copied.

CASES

1. Brooktree Corporation v. Advanced Micro Devices

Brooktree had registered layout design and claimed that AMD copied their layout design.
Although, it was not copied entirely but Brook tree claimed that qualitatively material part
has been copied. Whereas, AMD claimed reverse engineering.

The US Court of Appeals for the Federal Circuit has held in the case of Brooktree
Corporation v Advanced Micro Devices that a ‘paper trail does not exclusively prove a
reverse engineering defence’ under the SCPA. The Court explained that the statute does not
excuse copying where the alleged infringer first tried and failed to reverse engineer a chip
layout without copying.

Thus, the rights under the Act extend not only to the registered layout-design or chips
containing such registered layout-designs, but also over products containing such chips, e.g. a
watch or cell-phone.

2. Nintendo Vs Centronics (Australia)

Nintendo, holds the EL rights in its video games. The defendant, Centronics, imported video
game circuits which were unauthorised copies of Nintendo's circuit layout which Nintendo
manufactured and marketed in regard to its game products. Nintendo initiated proceedings
against Centronics and three of its directors for infringement of various intellectual property
rights, including Nintendo's circuit layout rights. The chip was copied in entirety. Size of chip
copied was smaller than original layout design which was registered, so copied was
miniature.
The Court held such copying to be infringement. Only the size of the chip was minimized. It
was not an original work, as it was not result of creator’s own intellectual efforts.

CONCLUSION [can be attached with any question of semiconductor]

The SICLD Act fulfills India’s obligation under the TRIPS agreement as approved by the
members of WTO. The intellectual property protection for Integrated Circuit layout design is
a key factor throughout the world, and more so in India because it does not have a strong
intellectual property protection policy in software. As integrated circuit layout designs is in
its early years in India, it’s important that the country boosts of a strong protection policy
right in the beginning itself and the SICLD Act provides such a strong protection policy.

The number of Indian companies focusing on integrated circuit design is beginning to grow
and this would force major semiconductor companies to set up their offices and address the
needs of the domestic market. This will encourage a lot more companies to base their
operations in India. The Indian legislation therefore provides a comprehensive protection to
the layout designs of the semiconductor integrated circuits as recognized intellectual property
and bundle of rights to the proprietor of the registered layout design.