Integrated Circuit Layout‐Designs

Introduction

 

The protection of layout-designs of integrated circuits in Malaysia is governed by the Layout-Designs of Integrated Circuits Act 2006 (the "Act") which came into force on 15 August 2000. Layout-designs are specifically excluded from the definition of a design that can be registered under the Industrial Designs Act 1996.

 

Definitions

 

As defined in the Act:

  • "integrated circuit" means a product, whether in its final form or in an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in and on, or in or on, a piece of material and which is intended to perform an electronic function; and
  • "layout-design" means the three-dimensional disposition, however expressed, of the elements of an integrated circuit and some or all of the interconnections of the integrated circuit or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture;

 

Qualification for protection

 

A layout-design is protected automatically (there is no registration system), provided the following conditions are met:

  • it is original, in the sense of being the result of its creator’s own intellectual effort and not being commonplace at the time of its creation;
  • the layout-design has been fixed in material form - this includes any form of storage from which reproduction is possible - or incorporated into an integrated circuit; and
  • the right holder was a qualifying person at the time the layout-design was created.

A qualifying person means a natural or legal person who is:-

  • a national of, domiciled or ordinarily resident in, or
  • incorporated in, or
  • has a real and effective industrial or commercial establishment for the creation of layout-designs, or for the production of integrated circuits in

Malaysia or any member country of the World Trade Organization (WTO).

The Governments of such countries also qualify to be the right holders of layout-designs.

 

Term of protection


A layout-design is protected for a period of 10 years from the date of its first commercial exploitation anywhere in the world, except that the term of protection shall not exceed a period of 15 years from the date the layout-design was created.

 

Rights of right holder

 

The right holder of a protected layout-design has the right to:-

  • reproduce, and authorize the reproduction, of all or a substantial part of the protected layout-design, whether by incorporation into an integrated circuit or otherwise; and
  • commercially exploit, and to authorize the commercial exploitation of, the protected layout-design, an integrated circuit in which the protected layout-design is incorporated, or an article that contains such an integrated circuit (commercial exploitation includes selling, letting for hire, or otherwise distributing by way of trade, and importation for these purposes).

 

Infringement

 

Generally, it is an infringement of the rights of the right holder to do in Malaysia any of the acts referred to in the immediately preceding section, without the right holder’s consent. However, there is no infringement where the act in question is done innocently, meaning the person concerned did not know, and could not reasonably be expected to have known that a copy of the protected layout-design, an integrated circuit in which it is incorporated, and/or an article in which such an integrated circuit was contained, was/were unauthorized.

 

Action and remedies for infringement

 

A right holder is entitled to bring an action in the High Court in the event of an infringement of his rights in a protected layout-design. The Court may grant an injunction, as well as make an order for damages or an account of profits, or such other relief as the Court considers fit. However, no damages shall be awarded against a defendant who, at the time of committing an act of infringement, was not aware and had no grounds for suspecting that the act constituted an infringement.

In an action to enforce the rights of a right holder, unless the defendant puts the matter in issue, there shall be a presumption that the layout-design is protected and that the plaintiff is the right holder.