India is known for its software industry but sluggish in the development of hardware sector. The designing of integrated circuits and its viability involve intensive capital and it's mostly a volume game with distinct functionalities. It is well known fact that these tiny products known as semiconductor brought revolution in electronic industry but Indian semiconductor market is far away from such products at large scale mainly due to factor likes these industries needed interrupted power supply and skilled and efficient technology, inadequate funding and adequate infrastructure.
It forces the department of Electronics & IT to bring national policy on Electronics which can attract investment of US $ 100 billion & employment of 28 million & may possibly grow the chip design market to US $ 55 billion1 as one of the three key electronic devices like mobile, TV & PC or laptop account for 70% of overall electronic consumption. The demand in Indian market was USD45 billion in 2008-09 & is expected to reach by USD 400 billion by 20202. This advancement needs proper legal & procedural framework otherwise it lead to chip piracy.
India being signatory of TRIPS brings in that similar protection to investors & creator, India enforced Semiconductor Integrated Circuit layout Act, 2000 which provides for protection of creator or author of Semiconductor IC layout design. The act3 is in conformity with the TRIPS agreement but different from U.S.4which does not provide protection to layout design without one or more active elements affixed to it but affords similar kinds of protection with sufficient opportunity to do reverse engineering for educational or research purpose, innovation unless it affects the creator rights. Similarly it provides for assignment, transfer, lease or sell or otherwise kinds of rights to creator who has put intellectual efforts in bringing new concept in semiconductor fields.5
The tiny particle with the distinctive properties between conductor & insulator namely semiconductor which is the foundation of modern electronics with unique properties application in transistor & other devices with the advancement of technology brings the revolution in almost all fields controlling mobiles, computers & even the fastest ballistic missile are based on these revolutionary material. The semiconductor & its design being distinct in itself having high quality engineering and involve huge investment demands legal protection too due to piracy. The legal provisions guarantee such protection based on originality & distinctiveness by simultaneously incorporating provisions for copying by reverse engineering limited to certain restriction. The paper tries to deal with the concept of distinctiveness & doctrine of equivalents whether such preposition can debar registration.
REGISTRATION PROCEDURE OF SEMICONDUCTOR IC & LAYOUT DESIGN
Any person who need to get certificate of registration for electronic design or its semiconductor IC need to file application u/s 8
1. Applicant must file application for registration to registrar within the territorial limits of principal place of business of applicant stating name, address & description of proprietor.
2. Application must states the
b. Technique and
c. Functionalities of the circuit
And must be different from other registered IC or layout design. However even if it accompanies the registered layout design or combination of elements which are commonly known among creators of layout design, if taken as a whole it can be considered original if it's a result of creator's own intellectual efforts.
1. If the application is accepted by registrar but can be rejected on the following grounds namely:
(ii) Commercially exploited
(iii) Inherently distinctive
(iv) Distinguishable from other registered layout design
2. When the application is accepted, registrar than within 14 days from the date of advertisement cause the same to be advertised.
3. On examination by registrar and with opposition if any within 3 month from the date of advertisement will grant certificate of registration u/s 13 subject to certain conditions like original, commercial exploitation and distinctiveness.
4. Certificate of registration is valid for 10 years from the date of filling of registration or from the date of first commercial exploration whichever is earlier.
5. Joint authorship in layout design is not permitted but can be claimed if and only if
a. Both of the authors have put combined efforts in creation of design or
b. Intellectual efforts are difficult to distinguish.
6. Registration provide the right to registered creator of layout design to sue for infringement or damages which otherwise is not permitted by law irrespective of the fact whether the layout design is embedded in article or not.
7. Proprietor right to assign or transfer- A registered layout-design shall be assignable and transmissible whether with or without the goodwill of the business concerned.
INFRINGEMENT OF LAYOUT DESIGN
Infringement of layout design takes place when not being the registered proprietor does any act like
a. Reproducing layout design in its entirety or its part except when it is not original or
b. Importing, selling or distributing for commercial purpose an article incorporating such registered layout design
Provided such above acts would not amount to infringement if used for scientific evaluation, analysis, research or teaching. Reverse decoding of these circuits if possible if such analysis is used to understand the scientific principle involved in these circuits or for any innovative purpose Or
Provided on the basis of research of registered layout design if someone produces another original article.
DISTINCTIVENESS IN CIRCUIT OR DESIGN
Now a day's number of new technique like VLSI or triple layer buffering or nano technology involved in manufacture or production of electronic components where thousands of elements are built on a layer installed in embedded design technology method bring drastic changes in designing being distinct in itself in use as well as function. For registration purpose each design or its layout or overall must satisfy the registration requirement i.e. distinctive. The real question involved is what are the parameters of distinctiveness i.e. distinct in what terms?
Are circuits different in terms of layout/component having same element but different connections performing different functions are distinct or there anything other than that is required? What about composition of elements, does it being a guiding factor in registration? How much distinctiveness is required & in terms of combination, elements, technology or any other factor.
However there is no list of such factors but there are certain parameters which are indeed helpful to find distinctiveness, list is not exhaustive. They are
1. components involved or component grouping in a circuit
2. key function performed (distinct application) like control mobile display or gaming function or certain motor of robots etc.,
3. distinguishable in terms of timing (clock rate), read, write or refresh command signals, frequency used or
4. method deploy in doing algebraic calculation,
5. interconnection [electrical interplay],
6. power sharing or power line[power topology],
7. interlayer or multiplayer,
8. energy consume & dissipation if innovative
9. passive elements, storage memory, operating temperature,
10. dual in line or molded package,
11. layout design pattern(single layer, double or tri layer) in its 3d pattern, device hole, inner lead pitch, base film thickness, material composition.
But design must be taken as a whole in making the determination of original or distinctiveness criteria.
Another grey area is whether additional or ancillary functions added in new IC liable to get protection which has to pass both the test of originality and distinctiveness.
However court able to distinguish the distinct element based on the claims mentioned in the application at the time of registration. As in Power Integrations, Inc., V. Fairchild Semiconductor International, Inc6 where court distinguish distinctiveness based on various electronic parameters like "frequency variation signal" and "soft start circuit", "frequency scaling" etc. primarily based on claim construction with their effect that whether such frequency variation or other are to be tested in terms of essentiality of invention or such claims be read on the prior art, obviousness or ignored as fundamental aspect of the invention's improvement.
Similarly, in Phillips v. AWH Corp7 court stated that ("[T] he claims are of primary importance, in the effort to ascertain precisely what it is that is patented."),
In Tate Access Floors, Inc. v. Interface Architectural Res8 court interprets the claim's words "in light of the intrinsic evidence of record, including the written description, the drawings, and the prosecution history."
In Teleflex, Inc. v. Ficosa N. Am. Corp9 court said that where the intrinsic record is ambiguous, and when necessary, we have authorized district courts to rely on extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." This shows that to resolve the ambiguity court formulate the doctrine of equivalents based on equitable concept to restrain infringer for getting benefits by making minor changes in invention. To prove infringement under the doctrine of equivalents, the patent holder must show that the accused device contains each limitation of the claim or its equivalent; an element in an accused product is equivalent to a claim limitation if the differences between the two are insubstantial to one of ordinary skill in the art.10
The act provides the legal protection both to layout design as well as semiconductor integrated circuit. The act is in conformity with TRIPS but different from US act which provides protection only if the mask work has atleast one active element attached or in other words US law provides protection if the chip work produces some kind of thing instead of being in paper only. This multi-billion dollar industry needs protection but it has grey area too, where companies show reluctance in coming to courts if two circuits have similar formalities may be because act themselves provide reverse engineering for copying and remaking of circuit on the ground of innovation. Unlike other IP products like patent or trademark or even copyright, semiconductor layout or design do not sustain for longer time due to fast change in technology, where even if one company make innovative semiconductor product another company come up with even far better and replace such in few days.
3 Semiconductor Integrated Circuits Layout-Design Act 2000
4 Semiconductor Chip Protection Act of 1984
5 Sec. 18 of The semiconductor integrated circuits layoutdesign act, 2000
7 Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir. 2005)
8 Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1370 (Fed.Cir. 2002).
9 Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002).
10 Pactiv Corp. v. S.C. Johnson & Son, Inc., 2000 U.S. Dist. LEXIS 18877 (N.D. Ill. Nov. 27, 2000)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.