Legal protection: Topographies of semiconductor products

KEY POINTS

Conditions for granting protection of topographies of semiconductor products

EU countries:

• must adopt legislation to protect semiconductor topographies wheretheir design satisfies 2 conditions:
  • they are the result of their creator’s own intellectual effort,
  • they are not commonplace among in the semiconductor industry. Where the elements of the topography of a semiconductor product are commonplace within the industry, it can be protected only to the extent that the combination of such elements, taken as a whole, fulfils the above condition;
• must grant the right to protection to the person who creates the topography, if that person is an individual who is a national of an EU country or ordinarily resident there. However, they may specify to whom the right is granted where a topography is created in the course of the creator’s employment or under a contract other than a contract of employment;
• may, under certain conditions, grant protection to individuals, companies or other legal persons who first commercially exploit a topography:
  • which has not previously been exploited commercially,
  • who have been exclusively authorised to commercially exploit the topography throughout the EU by the person entitled to authorise it;
• may enter negotiations with non-EU countries to extend the right to protection to persons not covered by the directive. Where they do so, they must inform the European Commission;
• may refuse or remove protection in respect of the topography of a semiconductor product where an application for registration in due form has not been filed with a public authority within 2 years of its being commercially exploited for the first time;
• may require that material identifying or exemplifying the topography be deposited with public authorities. However, this material must not be made publicly available where it is a trade secret.

Exclusive rights

The rights granted are exclusive rights. These include:

• the right to authorise or prohibit reproduction of a protected topography; and
• the right to authorise or prohibit commercial exploitation or the import for that purpose of a topography or of a semiconductor product manufactured using the topography.

The exclusive right to authorise or prohibit reproduction does not apply to reproduction:

• for private purposes for non-commercial aims;
• for the purpose of analysing, evaluating or teaching the concepts, processes, systems or techniques embodied in the topography or the topography itself.

The protection granted to the topographies of semiconductor products does not extend to any concept, process, system, technique or encoded information embodied in the topography other than the topography itself.

Registration

• Where registration of the topography is a condition for granting exclusive rights, those rights take effect either:
  • on the date on which the application for registration is filed; or
  • on the date on which the topography is first commercially exploited anywhere in the world, whichever comes first.
• Where registration is not a condition for granting exclusive rights, the rights take effect when the topography is first commercially exploited anywhere in the world or when it is first fixed or encoded.

Expiry of rights

The exclusive rights expire 10 years from the end of the calendar year in which the topography was first commercially exploited. Where registration is required, the 10-year period is calculated:

• from the end of the calendar year in which the application for registration was filed; or
• from the end of the calendar year in which the topography was first commercially exploited, whichever comes first.

Extension of legal protection to non-EU countries

Legal protection of topographies of semiconductor products has been extended to individuals, companies and other legal persons from:

• the United States (Decision 93/16/EEC),
• Canada (Decision 94/700/EC),
• a Member of the World Trade Organization (Decision 94/824/EC), and
• the Isle of Man (Decision 96/644/EC).

Enforcement of IPR

Regulation (EU) No 608/2013 on customs enforcement of intellectual property rights, which repealed Regulation (EC) No 1383/2003, extended the list of protected rights to also include topographies of semiconductor products from 1 January 2014.