Protecting Integrated Circuits
In Canada, integrated circuits can be protected under three forms of intellectual property law. In recent years there has been significant progress in Canada and in several other countries, towards establishing specific statutory protection for integrated circuit designs which are expected to have increasing value in the future. This document will review the general protection available for integrated circuits under the relatively recently enacted Integrated Circuit Topography Act, as well as the additional protection available under Canadian patent and copyright laws.
What is Integrated Circuit Topography
Integrated circuits are miniaturized electronic devices in which a number of active and passive circuit elements are located on or within a continuous body of material to perform the function of a complete circuit. Integrated circuits have a distinctive physical circuit layout, which is first produced in the form of a large scale drawing and later reduced and reproduced in a solid medium by high precision electro chemical processes. The term "integrated circuit" is often used interchangeably with such terms as microchip, silicon chip, semiconductor chip, and micro-electronic device.
The term "topography" describes a three-dimensional, layered "hill and valley" configuration which embodies the miniature electronic circuits of an integrated circuit. The layout of an integrated circuit will include one or more cross-sectional drawings which are superimposed upon each other and which together represent the complete integrated circuit or complete topography. A series of imaging, coating, etching and doping steps are required to produce a fabricated integrated circuit. The many coating and etching steps are carried out according to various layers of photographic images. Each successive image functions as a miniature stencil to define the design or pattern of each layer. These images are commonly referred to as integrated circuit "masks","mask works", or "topography".
Protection Under The Canadian Topography Act
In Canada, the topography of integrated circuits is protected under the Integrated Circuit Topography Act.
Exclusive Rights Granted
Under the Topography Act, the owner of a registered topography has the exclusive right to reproduce, manufacture an integrated circuit product incorporating, and import or commercially exploit, that registered topography or any substantial portion of it. The owner of a registered topography also has the right to prevent a third party without authorization, from engaging in any of these activities. These exclusive rights are available to both creators and manufacturers of a topography, whether it is incorporated into a manufactured integrated circuit or not and whether the integrated circuit is in a final or intermediate form.
What is Covered by the Act
The Act protects the original design of a registered topography. The Act specifically protects integrated circuit topography, defined as the design of the disposition of any interconnections and the elements for the making of an integrated circuit product, or the disposition of any elements and the interconnections for the making of a customization layer or layers to be added to an integrated circuit product in an intermediate form. This explicit definition generally refers to the original three dimensional pattern embodied in an integrated circuit as discussed above.
Since the Act refers to the term "topography" and not "mask work" as its U.S. counterpart does, the Act is not limited by any specific means of manufacture of an integrated circuit. For example, some newer methods of fabrication do not utilize masks, but rather manufacture integrated circuits using a method called "direct write" which involves the application of electronic beams (or other energy source) directly on the silicon substrate with layers of resist to create the desired integrated circuit design.
What are the Registrability Requirements?
For a topography to be registrable, it must be original and the applicant must comply with the Act's filing requirements. Further, the applicant must conform with certain creator residency/domicile requirements either in Canada or in a foreign country that, directly or through membership in an intergovernmental organization, provides certain protection of integrated circuit designs. It should be noted that these domicile requirements are not mandatory if a topography is first commercially exploited in Canada.
An original topography according to the Act means that it is not merely a copy of all, or substantial part of another topography, and that it is the result of intellectual effort. The Act does not protect pre-existing topographies which are commonplace among integrated circuit topography designers or manufacturers. This originality requirement is stronger than the originality required under the Copyright Act, but weaker than that required under the Patent Act.
What is the Term of Protection?
The Act protects registered topographies for up to ten years. The term of protection in Canada commences on the filing date of the registration application and ends on December 31 of the tenth year after either the year of the first commercial exploitation or the year of the filing date, whichever is earlier. This term of protection is substantially shorter than the term available under the Patent and Copyright Acts. Finally, under the Act, applicants can enjoy a two year grace period following first commercial exploitation of the topography to file the mandatory application for registration.
Infringement
The Act attempts to balance the objective of protecting owners of integrated circuit design topography against piracy, with the objective of fostering an environment which promotes the development and exploitation of integrated circuit-related technology. Thus while the monopoly rights in a registered topography are infringed by a person who, without authorization from the owner, engages in any activity involving the exclusive rights granted under the Act, there are statutory exclusions to this rule.
The exclusions allow a third party to copy a registered topography or to manufacture an integrated circuit incorporating that topography, to analyze or evaluate the topography or for research or teaching purposes. Further, a third party may perform acts corresponding to registrant's exclusive rights, which are carried out in connection with the creation of a second original topography, as a result of reverse engineering the registrant's topography. There is also a general exclusion for acts performed for private and non-commercial purposes.
Remedies for Infringement
The Act provides for a full range of civil remedies, including injunctions, damages and punitive damages. It also provides a defence to innocent infringers, who are dealing commercially with an infringing integrated circuit product, but are unaware, or have no reasonable grounds to believe, that it has been manufactured without authority. After notification of the infringement, their liability is limited to the payment of a reasonable royalty with respect to the disposal of integrated circuit products in inventory.
Filing Requirements
In order for a topography owner to have rights under the Act, they must register the topography at the Canadian Intellectual Property Office (CIPO). To register a topography, an applicant should obtain the appropriate forms from the CIPO, fill in the application with the required information and submit the completed forms to the Copyright and Industrial Design Branch of the CIPO.
Required information includes the applicant's name and address, the title and nature of the topography, and the applicant's interest in the topography, i.e. whether the applicant is the creator, or a successor in title of the creator. The date of first commercial exploitation, if any, must be provided, including the day, month and year as well as the country in which the exploitation occurred. In addition, the applicant must submit a complete set of overlay sheets, drawings or photographs of the topography and a description of the nature or function of the topography. Under certain conditions, some confidential information can be omitted from the drawings or photographs of the topography.
The Registrar of Topographies will not make a determination concerning a topography's originality or compliance with the requirements of the Act. Rather, the Registrar has authority to reject an application if the owner does not meet the nationality requirements, or if an application for an "exploited" topography is received more than two years after the date of first commercial exploitation anywhere.
For applications concerning topographies containing confidential information, the regulations have special provisions. If part of the confidential information is to be obscured, then the topography must have more than two (2) layers. Under these circumstances, up to 50% of the total area of the sheets, photographs and drawings can be blocked out provided that the following conditions are met: (a) The selected sheets, drawings or photographs must be clearly indicated in the application; (b) the number of sheets, drawings and photographs selected must not exceed 50% of the total number of sheets, drawings, and photographs; and (c) the application must contain topographic design data in printed form for the areas that are blocked out. However, if four (4) or more integrated circuit products are deposited, up to 50% of these data may be blocked out.
Finally, if the topography contains confidential information and has not been commercially exploited as of the data of filing the application, the application may instead contain: (a) the topography design data in printed form, of which up to 50% may be blocked out; and (b) a composite drawing or photograph of the topography, of which up to 50% may be blocked out.
Additional Protection Under Patent Law
While the Topography Act establishes a scheme for protecting integrated circuit layout designs which have solely functional or utilitarian features, it was not intended as a substitute for patent protection. The Topography Act confirms the co-existence of rights derived from other law with rights arising under the Act, except as otherwise provided by the Act. The exclusive rights granted under the Topography Act specifically exclude any rights relating to patentable subject matter such as ideas, concepts, processes, systems, techniques or information that may be contained in the topography of an integrated circuit. That is, the protection of the Topography Act does not extend to the patentable functions of an integrated circuit.
Certain aspects of integrated circuit products may be patentable, for example the structure and method of operation of electronic circuit manifested in an integrated circuit, or the industrial processes used to manufacture integrated circuit products. These functional aspects may be eligible for additional protection under the Patent Act, separate and apart from the rights available under the Topography Act. Protection under the Patent Act can be much broader than the protection available under the Topography Act, and should generally be considered in addition to protection under the Topography Act.
Additional Protection Under Copyright Law
As a result of the Topography Act, the Copyright Act does not apply to integrated circuit topography and is further deemed to never have applied to this subject matter. In so providing, the Topography Act finally resolves prior uncertainty over whether Canadian copyright legislation provides protection for integrated circuit designs.
However, it should be noted that the protection of an integrated circuit topography is a separate issue from the protection of the copyright and trade secrets (if applicable), present in the software that may be stored in an integrated circuit. Canadian copyright legislation can be used to protect the copyright in such software, and trade secret law can be used to protect software in some cases as industrial methods. The Topography Act clarifies the scope of protection under the Copyright Act, by stipulating that incorporating a computer program into an integrated circuit or incorporation of a work into such a computer program may amount to infringement of the copyright or moral rights in a work.
Additional International Protection
About twenty countries have explicit intellectual property protection for integrated circuits. Rights exist for Canadians in the U.S., Switzerland, Japan and Australia. Reciprocal protection agreements are currently being concluded between Canada and other countries, to provide protection for Canadian nationals and residents in countries which offer comparable protection to that available in Canada. The names of countries in which such reciprocal rights have been secured appear in notices in the Canada Gazette submitted by the Minister of Industry Canada. Owners of integrated circuit topographies should consider obtaining protection in other countries, especially where significant market opportunities are expected or where significant foreign competitors have manufacturing facilities.
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