Are you aware about protection of layout designs of Semi-Conductor Integrated Circuits? Before looking into the relevant legislation for registration and protection for these IC’s let’s consider few definitions for starters.
Integrated circuit (IC) is the miniature form of an electronic circuit which consists of transistors, diodes, resistors, conductors and conductive pathway that connects all these components on a flat surface which is generally silicon base (semi-conductor). This IC performs an electronic function. Generally, this IC’s are consolidated in the form of chips. ‘Topography’ means the layout design of the IC chip which describes the outline structure and arrangement of the conducting materials to perform a particular electronic function.
So why should we protect the topography of a semiconductor product?
The topography of an integrated circuit is the result of a huge investment in terms of both finance and research. There is a constant need for improvement, such as reducing the dimensions of integrated circuits. Topographies of semiconductor products also have considerable commercial value as they can be utilized in a wide range of products. A copy of the design could be done easily by photographing the layers of the integrated circuit which is referred as ‘chip piracy’. This is why legislation to protect layout designs has been introduced.1
Why do we need a separate law?
Let us see each existing legislations and their limitations to protect the topography of the IC’s:
Patents- the topography do not suffice for Novelty and non-obviousness criteria.
Copyrights- “industrial works” cannot be copyrighted only artistic works are copyrighted and the term of protection of copyright is very long and the economic life of the IC is only a few years so, the industry would not benefit from such long-term protection
Trade secrets- difficult to maintain the level of secrecy to qualify for trade secret protection once the chip is in market.
Designs- the designs protect only the external features of the product but topography is the internal design of the components that form the product as a whole.
From the above limitation we can conclude that the topography of the IC chip cannot be protected under patents, copyrights, trade secrets or designs 2. So, there is a necessity for a separate jurisdiction to protect such layout designs of the IC’s.
United states were first to protect IC design rights through the United States Code (17 U.S.C. sections 901-914) also known as Semi-Conductor Protection Act (SCPA), 1984. Under TRIPS agreement Section 6 article 35-38 explains the provisions regarding the protection of topographies of Integrated Circuits. Other countries have adopted their own legislation to protect the layout design (topography) of IC’s. 3
- European council: Council Directive 1987/54/EEC; the Legal Protection of Topographies of Semiconductor Products 1986
- Japan: Act concerning the Circuit Layout of a Semiconductor Integrated Circuit – 1985
- United Kingdom: Part III of the Copyright Designs and Patents Act – 1988, as modified by The Design Right (Semiconductor Topographies) Regulations – 1989
- Australia: Circuits Layouts Act of 1989
- Canada: Integrated Circuit Topography Act of 1990
- Hong Kong: Lay-out Design (Topography) of Integrated Circuits Ordinance of 1994
- Taiwan: IC Design Rights are protected by the Integrated Circuit Layout Protection Act of 1995.
- Korea: Act concerning the layout-design of Semiconductor Integrated Circuits, 1992
Even we have adopted a separate legislation to protect the IC’s under Semiconductor Integrated Circuit Layout Design Act, 2000 (SICLDA). In the Patents Act, 1970 under section 3(o) the topography of integrated circuits is non-patentable. So, a sui generis form of law is enacted to protect the layout designs of the IC chips. 4 SICLDA provides protection to the registered designs only and the requirements for registration of the layout design are explained under section 7 of SICLDA, 20005 i.e.,
- Not been commercially exploited anywhere in India or in a convention country
- Inherently distinctive
- Inherently capable of being distinguishable from any other registered layout design.
This act considers certain exceptional actions which do not infringe the registered layout design, i.e.,
- Layout design used for educational activities and research
- Reverse engineering
- Innocent infringement
What is the status of this legislation (Semi-Conductor Integrated Circuit Layout Design Registry SICLDR) in India?
The key issue to note is that even though the act was enacted in 2000 and a registry is appointed in 2004 but the substantive provisions were brought in force only in May 2011. From 2011 there are only two registered layout designs- 6
- 50-60 GHz Sub Harmonic IQ Mixer:7
Application no: 2(1)/2016
Applicant name: M/s Indian Space Research Organization Antariksh Bhavan, New BEL Road, Bangalore, 560231, India.
Specification: The mixer IC function as an I-Q/Single Side Band Mixer working for both frequencies up-conversion as well as down-conversion from 50-60 GHz. The Mixer is designed in Gallium Arsenide (GaAs) Monolithic Microwave Integrated Circuit (MMIC) Technology. Not requiring any DC supply, the Mixer is self-biased and needs +10 dBm of LO input for optimum performance. Tested maximum conversion loss is 14 dB. Circuit size : 3.9*2.0*0.10 mm.
- 8 Port Microcontroller (BE 80501) 8
Applicant name: M/s Bharat Electronics Ltd, Jalahalli, Bangalore, 560013, India.
Specification: The Layout has been made using 250 nm CMOS Standard cells, RAM cells and Embedded Flash memory for UMC, Taiwan foundry to meet the functionality of the circuitry. The layout has 21 mask tooling layers.
Why there are less filings in India?
The key reason for lesser number of filings is the lack of knowledge, information and zeal surrounding this law among the researchers and industries and India is still emerging as an important player in the semiconductor industry. With the amendment to the National Electronics Policy 2019,9 there is hope in improvement in filing for the semiconductor industry. Other factor for less number of filings is that this act does not provide protection to a process or mode of operation for which the IC is designed to perform such particular task related to the semiconductor IC.
Another reason is that this act solely protects the IC with semiconductor material as base substrate as the name suggests (SICLDA). If this act can adapt to the regulation under TRIPS agreement where the subject matter of protection is sufficiently broad to protect integrated circuits made from materials other than semiconductors like ceramics, superconductors, insulators or any other material as a substrate, there is a scope of increase in number of registered Layout designs.10
What is the status in Unites States?
In United States the layout designs are protected as mask works. The SCPA (Semi-Conductor Protection Act) was enforced in 1984 and from 1996, 12,000 mask works have been registered and it is to note that approximately half of them were registered by foreign individuals and corporations. SCPA also provides certain exceptions to infringement i.e.,
- Reverse engineering: paper trial 11 is the method used to prove reverse engineering.
- Innocent infringement.
Some drawbacks of SCPA are:12
- SPA is too custom-tailored so as to fit a specific technology (only semiconductor chips). Mask works were narrowly defined by reference to the definition of “semiconductor chip” only.
- SCPA failed in internationalizing protection: section 914 is a stopgap measure used until other countries met the requirements under section 902 of SCPA .
- Protection afforded is thin indeed. The process, procedure, mode of operation, principle or concept related to the creation of Mask work are not protected under this legislation.
Why more patents rather than registered mask works?13
U.S. is leading in the IC chip industry and all the major chip manufacturers are filing more number of patents in Integrated circuits rather than registering them under mask works. Even though the registration fee is insignificant as compared to millions of dollars spent in R&D and the registration process requires only a sample chip to be sent to the Copyright office, the industry participants have chosen not to register their mask works because,
- Public is aware of the major players of the industry and they will likely choose their products over a generic version of products available in the market,
- The specialization level of the product by this major chip manufacturers require manufacturing processes which are beyond the capabilities of a small-scale chip manufactures,
- Even if the competitor is able to dissect the chip and copy its multitude of layers they cannot simply have the ability to duplicate millions of transistors,
- By the time any potential pirate would be able to produce copies, these major players will likely introduce an improved version of existing chips.
So, the above factors tend to discourage any unauthorized reproductions. Therefore, we can conclude that these major chip manufacturers are considering SCPA (1984) is more useful to smaller integrated circuit producers in competition markets. The leading chip manufacturers often acquire patents for defensive purposes as bargaining chips in cross-licensing agreements.
So, considering the future scenario in IC industry it is a pressing issue to adapt to a broader range of protection of wide range of products under this legislation of protection of Integrated Circuits. Amendments to the existing law can prove to be more encouraging to all the market players to protect their mask works. So, all signatories should consider in amending their existing laws. Another step which can be considered is to mandate an automatic protection of the layout design rather than requiring registration under separate semi-conductor protection law, which aids in eliminating the major problem of chip piracy.14