IP Protection of Integrated Circuit (IC) Layout – Uncharted Territory

Having an innovation in semiconductors or IC layouts and not sure how to safeguard from silicon pirates? Look no further… This present article elaborates ways to secure such intellectual property (IP).

The evolution of IP laws in the semiconductor industry, both globally and in India, reflects the increasing importance of semiconductors and integrated circuit (IC) layouts. These laws provide a legal framework for creators and innovators to safeguard their IP, fostering continued growth and development in the sector.

Integrated Circuit (IC) layouts and their protection is an upcoming and significant facet of intellectual property law, legislated under the Semiconductor Integrated Circuits Layout-Design Act, 2000 in India.

However, the low number of prosecutions and applications under this act in India, despite its strong presence in the silicon market with Bangalore as a leading hub, is a significant missed opportunity for the government. This lack of utilization may stem from a lack of awareness about the protections offered by this statute. Present article seeks to create understanding/awareness and further the general knowledge in the domain with an emphasis on the benefits of registering under the provisions of this act.

 

IC Layouts for the novice

IP rights such as patents, copyrights, trademarks, and others grant creators and innovators a legal right to exclude others from making, selling, using, importing and offering for sale their creations. They help incentivize innovation, provide a competitive advantage, and are crucial for fostering creativity and economic growth globally.

With the advent and extensive application of semiconductors in the domain of micro and nano electronics, the Semiconductor Integrated Circuits Layout-Design Act, 2000 was enacted “to provide for the protection of semiconductor integrated circuits layout-designs and for matters connected therewith or incidental thereto.”

Under section 2(r) of the Act of 2000, the “semiconductor integrated circuit” “means a product having transistors and other circuitry elements which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function.”

Further, per section 2(h) of the Act of 2000, “layout-design” “means a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit.”

The act provides for protection of IC layouts for period of 10 years from the date of filing or 10 years from the date of first commercial exploitation (maximum of 2 years for filing from the date of exploitation) anywhere in India or in any convention country, whichever is earlier, granting the innovator rights to reproduce and many other rights to the inventors.

 

Evolution of IP Laws in Semiconductors and IC Layouts:

Formal protection to semiconductor chips was first imparted in the USA through enactment off the ‘Semiconductor Chip Protection Act (SCPA) in 1984’ and its impact was felt virtually throughout the world. Japan introduced similar provisions in 1985 via the ‘Japanese Circuit Layout Right Act (JCLRA).’ A similar EC Directive for implementing legislation in all Member States of the EU accelerated international efforts resulting in 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.

1. Global Evolution of IP Laws in Semiconductors and IC Layouts:

• TRIPS Agreement: The Agreement on Trade-Related Aspects of IP Rights (TRIPS) established minimum standards for IP protection, including semiconductor IC layouts. TRIPS set the foundation for the protection of semiconductor designs and layouts on an international scale.
• Washington Treaty: The Washington Treaty, administered by the WIPO, provides protection for the layout-designs IC. This treaty aimed to harmonize the protection of semiconductor IC layouts across different countries.
• Semiconductor Chip Protection Act (SCPA): In the United States, the SCPA was enacted to protect the topographies of semiconductor chips. This legislation granted exclusive rights to the creators of semiconductor layouts, similar to copyright protection.
• EU Semiconductor Directive: The European Union Semiconductor Directive provides protection for the topographies of semiconductor products. This directive harmonizes the protection of semiconductor IC layouts within the EU member states.

1. Evolution of IP Laws in Semiconductors and IC Layouts in India:

• Semiconductor Integrated Circuits Layout-Design Act, 2000: India enacted the Semiconductor Integrated Circuits Layout-Design Act in 2000 to provide protection for semiconductor IC layouts. This legislation aimed to encourage innovation in the semiconductor industry by safeguarding the rights of layout designers. This act came into effect from September 2000.

 

• Indian Patents Act: The Indian Patents Act, 1970 was amended in 2002 to include provisions for the protection of semiconductor IC layouts by inserting in section 3(o) topography of integrated circuits which are not patentable. This amendment brought India in line with international standards for the protection of semiconductor designs.

 

• TRIPS Compliance: India’s IP laws in the semiconductor sector have evolved to comply with TRIPS standards, ensuring that semiconductor IC layouts are adequately protected under Indian law.

Comparison between official IP annual reports of India between 2020-21, 2021-22 and 2022-23 subject to semiconductors and IC layout filings–

Annual Report	Applications received	Applications examined	Registration Certificate issued till date
Annual Report of 2020-21	05	00	02
Annual Report of 2021-22	01	00	02
Annual Report of 2022-23	08	10	02

As of FY 2023 only 23 applications are filed

 

Why do other types of Intellectual Property fail to protect IC layouts:

• Patents: An IC probably contains thousands or even lakhs of semiconductor devices. Hence a patent claim of the IC will have to cover multiple elements, thus running in hundreds of pages. Drafting a patent application supporting a claim with thousands or even lakhs of elements would be extremely complex, cumbersome, and expensive and also may take several years to be accepted. This would be unacceptable to any semiconductor business as IC have small commercial life in this rapidly evolving technological landscape. Although IC layout design cannot be protected under patents, these chips’ functional aspects and innovative manufacturing processes are patentable.
• Trade secret: Trade secret laws are inadequate for preventing the piracy of semiconductor chips, as the layout design of IC can be reverse engineered with minimal effort.
• Designs: IP protections such as industrial design rights are restricted to covering only the visual appearance of an IC. On the other hand, the layout design of an IC is far more complex and functional, necessitating a level of protection that goes beyond the scope of industrial design protections. This makes the design act insufficient for safeguarding semiconductor chips effectively.

 

Semiconductor Integrated Circuits Layout-Design Act, 2000:

Here are the salient features of the Act:

• Process for registration of layout designs of semiconductor IC is provided u/S.16
• Qualification criteria to determine which layout designs are eligible for protection u/S.7
• Rules are in place to prevent the registration of non-original or commercially exploited layout designs u/S.7(1)(a)(b)
• The Act registers a 10-year term of protection for registered layout designs u/S.15
• Procedures for addressing violations and proving the validity of registered designs u/S.19, S.62 and u/S.82
• Provisions for determining royalty payments in cases of unintentional infringement u/S.18(5)
• Imposition of penalties, including imprisonment and fines, for intentional violations and other offenses u/S.56 to 67
• Appointment of Registrars to oversee the registration of layout designs, and an establishment of an Appeals Body to handle legal remedies u/S.3

 

Requirements for Registration of semiconductor IC layouts

1. Brief description of the layout-design.
2. Three sets of Schematic diagrams of layout-design in A4 sheet.
3. 3 CDs of layout-design in GDS II format along with PDK information
4. Semiconductor integrated circuits (4 pieces) [Where an Integrated Circuit (IC) has been made using layout-design for registration, if available]
5. Classification of the semiconductor integrated circuit which can be manufactured using the layout-design:

1. Structure (it implies giving structure details like Bipolar, MOS, Bi-MOS, Optical IC, Other (specify).
2. Technique (it implies giving technique details like TTL, DTL, CMOS, NMOS, PMOS, Other (specify).
3. Functions (it implies giving functional details like Logic, Memory. Linear, Microcomputer, Other (specify).

Form and Fees –

Government fee for Registration of Layout-Design Form LD-1: INR 5,000 (For Demand Draft: PAO CGPDTM payable at Mumbai)

At StratJuris Law Partners, our team of associates and partners have extensive experience in the technical domain of semiconductor IC layouts along with recent developments. We are dedicated to helping inventors secure their intellectual property and navigate the complexities of protecting their innovations. With our deep expertise in both technical and legal aspects, we are well-equipped to assist inventors in meeting all necessary timelines and requirements.

Further, the Semiconductor Integrated Circuits Layout-Design Act, 2000 in India plays a pivotal role in protecting the original layout designs of IC. By granting legal protections, the Act fosters innovation in semiconductor technology and incentivizes investment in creative endeavours within this specialized industry. This legal framework ensures that creators of IC layouts can derive economic benefits from their IP, thereby contributing to the overall advancement of technology and economic growth.