27 May 2010
Semiconductor products (or silicon chips) are an essential product of all modern electronic equipment with applications in everything from motor cars to mobile phones. The industry developed in the late 1970s and early 1980s and it quickly became clear that neither patent nor copyright protection provided satisfactory protection for semiconductor products. There was a flurry of legislative effort around the world which has to a large extent been harmonized by the Washington Treaty (the Treaty on Intellectual Property in respect of Integrated Circuits) and TRIPs agreement (Agreement on Trade-related Aspects of Intellectual Property Rights).
HM government is bound to protect semiconductor topographies by the Washington Treaty , TRIPs and the Semiconductor Topographies Directive (Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor products). Semiconductor topographies are protected in the UK by Part III of the Copyright Designs and Patents Act 1988 (“the 1988 Act”) as modified by The Design Right (Semiconductor Topographies) Regulations 1989 (“the 1989 regulations”).
A “semiconductor topography” is essentially a design of a “semiconductor product”. A semiconductor product is an article that performs an electronic function. It consists of at least two layers, one of which must be composed of semi-conducting material in or upon which a pattern is fixed. Such pattern must appertain to the electronic function mentioned above or to some other function. The semiconductor topography is the design either of the pattern to be fixed on a layer of the semiconductor product or of a layer of material used to manufacture the semiconductor product. Alternatively, it may be the design of the arrangement of patterns fixed, or intended to be fixed, in or upon the layers of a semiconductor product in relation to one another.
Reg 3 of the 1989 regulations applies Part III of the 1988 Act to semiconductor topographies with modifications as to Qualification, Ownership, duration, infringement and Licences of Right. These regulations replaced The Semiconductor Products (Protection of Topography) Regulations 1987 which briefly established a free-standing “topography right”. They came into effect on 1 August 1989 (the commencement day of the 1988 Act) and have been amended only to widen the class of nationals benefiting from semiconductor topography protection.
When industrial designs ceased to be protected by artistic copyright on 31 July 1989, product designers outside the UK lost their protection in the UK under the Bern Convention. S.217 (3) of the 1988 Act extends national design right protection only to the UK, EC and a handful of other countries that provide reciprocal protection for British designs. This has a number of undesirable consequences as Pumfrey J noted at paragraph  of Mackie Designs Inc v. Behringer Specialised studio equipment (UK) Ltd, and another  EWHC Ch 252 BAILII. Since the UK’s international obligations mentioned above require wider protection, reg 4 (1) of the 1989 regulations substitute a special s.217 for semiconductor topographies that extends protection to nationals or citizens of the USA, Japan, Switzerland and various other countries. Reg 4 (4) also inserts a special s.220 (1) which extends protection to topographies where the first marketing of an article made to the design takes place in an EC member state by a by a qualifying person exclusively authorized to put such articles on the market in every member state. Subject to two exceptions, reg 7 requries no account to be taken of any sale. hire, or any offer or exposure for sale or hire, which is subject to an obligation of confidence in respect of information about the semiconductor topography in question. The first of those exceptions is where the article or semiconductor topography had been sold or hired on a previous occasion whether or not subject to an obligation of confidence. The second is where the obligation was imposed at the behest of the Crown or a foreign government for the protection of security in connection with the production of arms, munitions or war material.
One consequence of such extension of design right protection is that different rules are necessary to determine first ownership of semiconductor topographies benefiting from such extension. Reg 5 substitutes a special s. 215 that modifies slightly the usual provisions.
Reg 6 modifies s.216 of the 1988 Act by starting the 10 year term from the end of the calendar year in which the topography as an alternative to articles made to the design were first made available for sale or hire anywhere in the world. Alternatively, if neither the topography nor articles made to the topography are made available for sale or hire, the term is 15 years from when the topography was first recorded in a design document or an article was first made to such topography. The provisions of reg 7 referred to above also apply when determining whether a topography or article has been made available for sale or hire.
Reg 8 substitutes a new s.226 (1) that modifies the existing s.226 by substituting the exclusive right to reproduce the design by making articles to that design or making a design document recording the design for the purpose of enabling such articles to be made to a new subsection (1A). This excepts reproducing a design privately for non-commercial aims and reproducing a design for the purpose of analysing or evaluating it or analysing, evaluating or teaching the concepts, processes, systems or techniques embodied in it. Para (2) of that same regulation provides a defence to secondary infringement under s.227 of the 1988 Act where the article in question has previously been sold or hired within the UK by or with the licence of the owner of design right in the semiconductor topography in question. The same exception applies where such an article was previously sold or hired within ) the territory of any other member state (including Gibraltar) by or with the consent of the person for the time being entitled to import it into or sell or hire it within such territory.
Licences of Right
The provisions of s.237 of the 1988 Act allowing anyone in the world, including an infringer, to apply for a licence of right in the last 5 years of the design right term (and thereby limiting the relief that can be granted against anyone offering to take such a licence under s.247) are excluded by reg 9.