Integrated Circuit Topographies: Integrated Circuit Topographies

• Definition and use
• Canadian protection for integrated circuit topographies
• Exceptions
• Remedies
• Protection for integrated circuit topographies abroad
• Registration
• Fees
• Marking
• Further information

Definition and use

Semiconductor integrated circuits are at the heart of modern information, communications, entertainment, manufacturing, medical and space technologies, and are now finding their way into items as ordinary as household appliances. The Act and Regulations refer to the "microchips" which embody such integrated circuits as "integrated circuit products."

Today's integrated circuit products are constructed from a complex series of layers of semiconductors, metals, dielectrics (insulators) and other materials on a substrate. The Act and Regulations refer to the three-dimensional configuration of these layers as an "integrated circuit topography." The Integrated Circuit Topography Act provides protection against copying of registered topographies, but does not prevent others from developing integrated circuit products which use other topographies to provide the same electronic functions.

Some integrated circuit products, such as Random Access Memories (RAMs) and Read Only Memories (ROMs) may be used to store sets of instructions for electronic processors. In addition to the protection available for integrated circuit topographies embodied in such integrated circuits, the sets of instructions they store may be subject to protection under the Copyright Act as literary works, and may in some cases be patentable as industrial methods. Other aspects of integrated circuit products may also be patentable, for example, the structure and method of operation of electronic circuits embodied in integrated circuit products, or industrial processes used to manufacture integrated circuit products. Indeed, protection available under the Patent Act can be much broader than the protection available under the Integrated Circuit Topography Act, and should generally be considered in addition to protection under the Integrated Circuit Topography Act.

Protection in other countries should also be considered, particularly where significant market opportunities are expected, or where significant foreign competitors have manufacturing facilities.

Canadian protection for integrated circuit topographies

Canada's legislation to protect integrated circuit topographies is comparable to that of some other countries. The protection is provided by the Integrated Circuit Topography Act.

This legislation protects the original design of a registered topography, whether it has been embodied in an integrated circuit product or not. Topographies which define only part of the structure needed to perform an electronic function may be registered. For example, topographies which define generic layers of gate array integrated circuit products, and topographies that define interconnection layers which customize gate array integrated circuit products to perform specific electronic functions, may be registered separately.

A topography will qualify as original if it is developed through the application of intellectual effort, and if it is not produced by the mere reproduction of all, or a substantial part, of another topography. The Act does not protect pre-existing topographies which are commonplace among topography designers or integrated circuit product manufacturers.

The Integrated Circuit Topography Act provides protection by giving owners of registered topographies exclusive statutory rights to control certain actions. The legislation permits owners of registered topographies to exclude others from:

• reproducing a protected topography or any substantial part of one;
• manufacturing an integrated circuit product incorporating the topography or a substantial part of one;
• importing or commercially exploiting (which includes the sale, lease, offering or exhibiting for sale or lease, or other commercial distribution) a topography or a substantial part of one, or of an integrated circuit product that embodies a protected topography or a substantial part of one;
• importing or commercially exploiting an industrial article which incorporates an integrated circuit product that embodies a protected topography, or a substantial part of one.

The Act protects registered integrated circuit topographies for up to ten years. The term begins on the filing date of the application for registration. The term ends on December 31 of the tenth year after the year of the first commercial exploitation or the year of the filing date, whichever is earlier.

Exceptions

The exclusive rights listed above are subject to some exceptions, three of which are:

1. One exception relates to the exhaustion of rights applying to integrated circuit products legitimately put on the market anywhere in the world with the authorization of the owner of the rights. After the first legitimate sale of such a product, the topography owner has no statutory right to control its use, rental, resale or redistribution.
    
2. Another exception allows the unauthorized copying of a protected topography for the sole purpose of analysis or evaluation, or for the sole purpose of research or teaching with respect to topographies.
    
3. The Act also permits reverse engineering, which is a process of taking apart an integrated circuit to design a new and original topography. The topography created by such a procedure must meet the originality requirements of the Act if it is to be exploited commercially without the authorization of the original owner of the rights. With this exception, the legislation provides for the suppression of piracy without creating unnecessary obstacles to a free market in semiconductor chips or to the spread of chip technology.

Remedies

The Act provides for the full range of civil remedies including injunctions, damages and punitive damages. It also provides a defence to innocent infringers, i.e., persons dealing commercially with an infringing integrated circuit product, but unaware, or having no reasonable grounds to believe, that it has been manufactured without authority. After having been notified of the infringement, their liability is limited to the payment of a reasonable royalty with respect to the disposal of integrated circuit products in inventory.

When a court concludes that there has been importation of integrated circuit products in contravention of the Act, Revenue Canada Customs may be required by the court to stop the entry of such products and of articles which incorporate them, and to arrange disposal of them according to a court order.

Protection for integrated circuit topographies abroad

Some twenty countries have explicit intellectual property protection for semiconductor chips.

Rights exist for Canadians in the United States, Switzerland, Japan, Australia and other countries.

The intent is to arrange protection for nationals and residents of Canada in countries which offer comparable protection to that provided in Canada.

The Minister of Industry Canada announced, by a notice in the Canada Gazette, the names of countries in which reciprocal rights have been secured. A list of countries granting reciprocal rights may be found in the Integrated Circuit Topography Act.

In addition, the Act has been amended to allow for protection for World Trade Organization members, without the necessity of an agreement or the publication of a notice of reciprocity in the Canada Gazette.

Protection in other countries should be considered, particularly where significant market opportunities are expected or where significant foreign competitors have manufacturing facilities.

Registration

For the owner of a topography to have rights under the Act, the topography must be registered. The creator of the topography (the owner) or the successor in title may apply for registration of the topography.

The Registrar of topographies will not examine a topography to determine originality or compliance with the requirements of the Act. However, the Registrar has authority to reject an application if the creator does not meet the nationality requirements.

To register a topography, you should obtain the forms from CIPO (see Appendix B - Application Form), put the appropriate information on the forms, including title or titles of topography, date and location of first commercial exploitation, name and address of applicant, applicant's interest in the topography, and a description of the nature or function of the topography, and submit the completed forms to the Office of the Registrar of Topographies. It is also possible to submit an application using the online forms.

In addition, you must submit a complete set of overlay sheets, drawings or photographs of the topography. Under certain conditions, some confidential information can be omitted from the drawings or photographs of the topography.

Please note that the application must be filed within two years of the first commercial exploitation of the topography. It is also possible to submit an application using the online forms.

Fees

Fees are charged for various services in relation to the registration of a topography. A tariff of fees is included in this guide.

Please note that payments may be made by credit card (VISA, MasterCard or American Express), deposit account, postal money order or cheque payable in Canadian dollars to the Receiver General for Canada. Do not add federal and provincial taxes.

Marking

While marking of integrated circuit products is not obligatory, it is advisable to mark a product with a title corresponding to the registered title or titles. Failure to do so may constitute a valid defence in an infringement action if a defendant can prove having had no knowledge of the registration of the topography.

Further information

Staff at the Office of the Registrar of Topographies will be pleased to assist you with general questions about integrated circuit topographies and the registration process.

Address your correspondence to:

Office of the Registrar of Topographies
Canadian Intellectual Property Office
Industry Canada
Place du Portage I
50 Victoria Street
Gatineau, QC K1A 0C9

You may also request information and application forms or telephone for general information and application forms at
(819) 997-1936 between 8:30 a.m. and 4:30 p.m.,
Eastern time, Monday through Friday, except on legal holidays.

Any correspondence addressed to the Office of the Registrar of Topographies at CIPO headquarters in Gatineau and delivered:

1. during business hours to CIPO headquarters, will be accorded the date of receipt that day;
2. during business hours to Industry Canada headquarters or to one of its regional offices, will be accorded the date of receipt in that office*;
3. at any time electronically, including by facsimile, will be considered to be received on the day that it is transmitted, if received before midnight, local time, at CIPO headquarters*; or
4. through the Registered Mail service of the Canada Post Corporation (CPC), will be accorded the date stamped on the envelope by CPC*.

*Only if it is also a day on which CIPO headquarters in Gatineau is open, if not, it will be considered received on the next working day.

A guide to integrated circuit topographies
| Table of contents | Introduction | Integrated circuit topographies | Tariff of fees |
| Appendix A — Instructions for completing an application form |
| Appendix B — Application form |