Microchips or silicon chips are common names for what are more technically known as integrated circuits. These chips are essential to the computer and information technology industries as, quite simply, without them there would be no industries. Microchips are also found in numerous other devices, including refrigerators, mobile phones, microwave ovens and pacemakers. The chips are basically electric circuits, and the patterns of these circuits are the circuit designs. Patent law protects the processes used in making these chips, including new designs and new manufacturing processes. This article will look at the law surrounding semiconductor design rights in more detail.
The semiconductor design right
An amended version of Part III of the Copyright, Designs and Patents Act 1988 gives protection to what is known as the semiconductor design right. The right was introduced by the Design Right (Semiconductor Topographies) Regulations 1989. Specifically, the topography of a semiconductor is protected, which under Regulation 2 is a design which is either:
the pattern fixed, or intended to be fixed, in or upon—
(i) a layer of a semiconductor product, or
(ii) a layer of material in the course of and for the purpose of the manufacture of a semiconductor product, or
the arrangement of the patterns fixed, or intended to be fixed, in or upon the layers of a semiconductor product in relation to one another.
A semiconductor product is defined as ‘an article the purpose, or one of the purposes, of which is the performance of an electronic function and which consists of two or more layers, at least one of which is composed of semiconducting material and in or upon one or more of which is fixed a pattern appertaining to that or another function.’
This basically means that all original integrated circuits are protected by the Regulations. As long as the circuit has at least two layers, and one layer is made of a semiconducting material which has a pattern fixed on it for the purpose of performing an electronic function, the definition is satisfied.
Subsistence and ownership of the right
The semiconductor topography must be original in order to be afforded protection. Under s213 of the Copyright, Designs and Patents Act 1988 originality means not commonplace in the relevant field of design at the time of creation. Under Article 2(2) of Directive 87/54/EEC on the legal protection of topographies of semiconductor products, a topography which has commonplace elements may still be afforded protection if, taken as a whole, it is the result of its creator’s own intellectual effort and is not commonplace.
Under s215 of the Act the first owner of the right is the designer, unless the design is the result of a commission or was developed in the course of employment. If so, the commissioner or the employer will be the owner, unless there is an agreement otherwise. Under s214 of the Act, the designer is the person who creates the design. Regarding computer generated designs, the designer is the person who makes the necessary arrangements to create the design.
Duration of the right
The duration of a semiconductor design right starts to run from when the topography is exploited for commercial purposes. Under s216 of the Copyright, Designs and Patents Act 1988 this is ten years from the end of the year when the topography was first exploited commercially (anywhere in the world). If the right is not exploited within 15 years of the topography being created, it will expire 15 years after the topography was first recorded in a design document, or 15 years after the time when an article was first used to make the design, whichever is the earlier.
Licences of the right
Unlike other designs which can be afforded design rights, by Regulation 9 of the Design Right (Semiconductor Topographies) Regulations 1989 licences of semiconductor design rights are not available.
Infringement of the right
A person who, without the permission of the owner of the right, reproduces a topography design by making articles based on the design, or by making a design document which records the design for the purpose of making articles, will infringe the owner’s right. Infringement is permitted in certain circumstances, however, for research, education or non-commercial purposes. It is also possible under s226(1A) of the Copyright, Designs and Patents Act to reproduce a topography for the purposes of analysing it, or analysing the concepts, processes, systems or techniques that it contains. If another original topography is created as a result of this analysis, this will not be infringement under Regulation 8(4) of the Design Right (Semiconductor Topographies) Regulations 1989. In effect, this sanctions reverse engineering, that is, the process of discovering a device’s technological properties by analysing its structure or function. Infringement of a semiconductor design right may also be an infringement of copyright, and if it is, then copyright law alone should be used to pursue remedies, in line with s236 of the Copyright, Designs and Patents Act 1988.
Under s229 of the Copyright, Designs and Patents Act 1988 the remedies available for infringement of a design right are injunctions, damages and accounts of profits. Orders may also be made for delivery or destruction.