Law Made Simple

Intellectual Property Law

Note 2 0f 7 Notes
Industrial Design
Layout – Designs of Integrated Circuits Act 2000

Musbri Mohamed
DIL; ADIL ( ITM )
MBL ( UKM )

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Society values the creative fruits of
the human mind, as they enrich the
fabric of life for all its members.

Thus, a system of laws has been

developed that confers rights on the
creators of those fruits. These rights
are collectively known as
Intellectual Property Rights.

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Way back in 1883, the first multilateral convention
known as the Paris Convention for the Protection of
Industrial Property was concluded.

This Convention applies to industrial property in the

widest sense, including inventions, marks, industrial
designs, utility models, trade names, geographical
indications and the repression of unfair competition.

As to industrial designs: Industrial designs must be

protected in each contracting state, and protection may
not be forfeited on the ground that the articles
incorporating the design are not manufactured in that
state.

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The Paris Convention, concluded
in 1883, was completed by an
Interpretative Protocol in Madrid
in 1891, revised in Brussels in
1900, in Washington in 1911, in
The Hague in 1925, in London in
1934, in Lisbon in 1958 and in
Stockholm in 1967, and it was
amended in 1979.

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 TRIPs, which was signed in Marrakesh in April 1994 as an annex to the
Agreement establishing the WTO, is probably the most significant
development in international IP law so far. The IP regime that was created
in the 1880's based on the twin foundation of the Berne and Paris
Conventions (which later came under the administration of the WIPO, has
been subsumed by a regime based on the TRIPs Agreement under the
supervision of the WTO.

The perceived ineffectiveness of the Paris and Berne Conventions in the

face of the significant growth of global trade in pirated and counterfeit
products, together with the failure of WIPO to achieve significant
amendments of the Paris Convention, in particular, led to the inclusion of
IPRs within the Uruguay Round of the General Agreement on Tariffs and
Trade.

The TRIPs Agreement adopts portions of the Berne, Rome and Paris
Conventions and the Washington Integrated Circuits Treaty in enun-ciating
norms for IP laws. In addition, it provides for the administrative and
judicial enforcement of IPRs and includes provisions for border control of
the trade in infringing goods.

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The gist of k-economy pursue by Malaysia is to go
on making innovations and creating newer and
newer products and services through research and
development in all sectors of the economy.

In order to encourage these innovations on a

continuing basis, the innovative products and
services ought to be given protection through IP
laws. The MSC project visualized innovation
through a collaborative effort between Malaysian
and foreign companies and organizations. World-
class companies will not innovate here unless they
are assured of world class IP protection for their
new products and services.

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The Second Industrial Master Plan ('IMP2') was
launched by the Federal Ministry of International
Trade and Industry in November 1996 to provide
strategic guidelines on industrial policies. One of the
strategies outlined in IMP2 encourages manufacturers
to embark on high value-added activities in Malaysia.

The Worldwide Manufacturing Web flagship

application of the MSC aims to provide a conducive
environment for these high value-added
manufacturing activities to be pursued using
multimedia and information technology

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What is an industrial design?

An industrial design is the ornamental or aesthetic aspect of an article.

The design may consist of three-dimensional features, such as the shape
or surface of an article, or of two-dimensional features, such as patterns,
lines or color.

Industrial designs are applied to a wide variety of products of industry

and handicraft: from technical and medical instruments to watches,
jewelry, and other luxury items; from housewares and electrical
appliances to vehicles and architectural structures; from textile designs
to leisure goods.

To be protected under most national laws, an industrial design must

appeal to the eye. This means that an industrial design is primarily of an
aesthetic nature, and does not protect any technical features of the
article to which it is applied.

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Why protect industrial designs?

Industrial designs are what make an article attractive and appealing; hence,
they add to the commercial value of a product and increase its
marketability.
When an industrial design is protected, the owner - the person or entity that
has registered the design - is assured an exclusive right against unauthorized
copying or imitation of the design by third parties. This helps to ensure a
fair return on investment. An effective system of protection also benefits
consumers and the public at large, by promoting fair competition and
honest trade practices, encouraging creativity, and promoting more
aesthetically attractive products.
Protecting industrial designs helps economic development, by encouraging
creativity in the industrial and manufacturing sectors, as well as in traditional
arts and crafts. They contribute to the expansion of commercial activities and
the export of national products.

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It is a well-known fact that in the past
several decades, intangibles are fast
becoming the major assets with significant
impact on the value and growth of many
companies.

In developed countries such as the US,

intangible assets which encompass
intellectual property, has well surpassed
tangible asset to become the principal
contributor to the market value of the many
major companies listed in the stock markets.

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In 1994 and 1995, Mansfield had carried out the oft-
quoted surveys among various US, Japanese and German
firms to find out the relationship between IPRs protection
and investors' decision to inject foreign investment into a
particular country.

The surveys show that in the more sophisticated industries

such as chemical industry, 46% of the foreign firms were
concerned about IP protection for basic production and
assembly facilities, whereas 71% is concerned about IP
protection for component anufacture, 87% for complete
products manufacture and 100% for R&D facilities. In
other words, the higher the stage of production, the more
concerns they have about IP protection.

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How can industrial designs be protected?

In most countries, an industrial design must be registered in order to be protected

under industrial design law. As a general rule, to be registrable, the design must
be "new" or "original". Different countries have varying definitions of such
terms, as well as variations in the registration process itself. Generally, "new"
means that no identical or very similar design is known to have existed before.
Once a design is registered, a registration certificate is issued. Following that, the
term of protection is generally five years, with the possibility of further periods
of renewal up to, in most cases, 15 years.

Depending on the particular national law and the kind of design, an industrial
design may also be protected as a work of art under copyright law. In some
countries, industrial design and copyright protection can exist concurrently. In
other countries, they are mutually exclusive: once the owner chooses one kind of
protection, he can no longer invoke the other.

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How extensive is industrial design protection?

Generally, industrial design protection is limited to the country

in which protection is granted.

Under the Hague Agreement Concerning the International

Deposit of Industrial Designs, a WIPO-administered treaty, a
procedure for an international registration is offered. An
applicant can file a single international deposit either with
WIPO or the national office of a country which is party to the
treaty. The design will then be protected in as many member
countries of the treaty as the applicant wishes.

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Universities and other institutions will continue to
contribute to the training of the persons who will be
the legislators, judges, administrative officials, legal
practitioners and even teachers and researchers, of
tomorrow.

Research institutes will continue to contribute to the

analysis of the intellectual property system and make
suggestions for its improvement.

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Four types of intellectual property courses are typically
taught at the university and law school level.

These are :-

Survey Courses,
Specialized Courses,
Advanced Seminars and
Practice Courses.

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Survey Courses are basic, broadly focused courses, which are intended to give
an overview of the various fields of intellectual property law, with enough
specific facts to interest students who might decide on a speciality in
intellectual property. Survey courses, which may be titled, for example,
“Introduction to Intellectual Property” or “Patent, Copyright and Trademark
Law,” are popular with business and Government students, who are looking for
an economic perspective on the protection of the creations of individuals.

The teaching of survey courses is especially suited to lecturers who are just
starting to teach intellectual property — they may learn, along with the
students, the breadth and complexity of intellectual property protection.
However, many experienced teachers who specialize in intellectual property
enjoy teaching survey courses because they find that the interaction with
students from a wide range of backgrounds continually broadens their
perspective.

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Specialized Courses focus in-depth on a single field of
intellectual property. Specialized courses carry titles such
as “Introduction to Patent Law,” “Copyright Law and
Practice,” “International Trademark Law,” “Intellectual
Property Licensing,” “Unfair Competition,” etc. These
courses convey the particulars of the field of law under
consideration, including a study of the statutes,
regulations and procedures involved. Court interpretation
of the law and judicial doctrines in common law
countries, procedures for applying for and obtaining
rights, and procedures for enforcing rights are some of
the topics which would be addressed.

After finishing such a course, a student should be

familiar with all the important doctrines of the field of
law, and should have a good understanding of the most
important standards for obtaining and enforcing rights.

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Advanced Seminars are designed for students who have taken
a specialized course in a particular field, and are prepared to
learn more detail about one or more particular aspects of that
field. An example of an advanced seminar in the patent field
might be a course which examines the history of the protection
of an invention, from the time that a patent application is filed,
through the process of examination and issue of the patent by
the Patent Office, and through all stages of enforcement of the
patent through litigation in the courts. In this way, the student
would learn the practical application of the principles of patent
prosecution and litigation that were learned in a general form
in the specialized patent course.

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Practice Courses focus on the actual steps that an
attorney would take in practice to obtain and
enforce intellectual property rights. Courses such as
“Patent Office Practice,” “Copyright Litigation”
and “Trial Advocacy for Intellectual Property
Attorneys” challenge students to do the very things
that they will be asked to do in their legal practice.
Practice courses are often best taught by practising
attorneys as adjunct teachers, who will be teaching
the things that they are currently doing in their daily
work.

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Under the Hague Agreement Concerning the
International Deposit of Industrial Designs , a
WIPO-administered treaty, a procedure for an
international registration exists. An applicant can
file for a single international deposit with WIPO or
with the national office in a country party to the
treaty. The design will then be protected in as
many member countries of the treaty as desired.
Design rights started in the United Kingdom in
1787 with the Designing and Printing of Linen Act
and have expanded from there.

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India

India's Design Act, 2000 was enacted to consolidate and

amend the law relating to protection of design and to comply
with the articles 25 and 26 of TRIPS agreement. The new
act, (earlier Patent and Design Act, 1911 was repealed by
this act) now defines "design" to mean only the features of
shape, configuration, pattern, ornament, or composition of
lines or colour applied to any article whether in two or three
dimensional, or in both forms, by any industrial process or
means, whether manual or mechanical or chemical, separate
or combined, which in the finished article appeal to and are
judged solely by the eye; but does not include any mode or
principle of construction.

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Canada

Canada's industrial design act affords ten years of protection to

industrial designs that are registered; there is no protection if the
design is not registered. The Industrial Design Act (R.S., c. I-8)
defines "design" or "industrial design" to mean features of
shape, configuration, pattern or ornament and any combination
of those features that, in a finished article, appeal to and are
judged solely by the eye.

During the existence of an exclusive right, no person can "make,

import for the purpose of trade or business, or sell, rent, or offer
or expose for sale or rent, any article in respect of which the
design is registered." The rule also applies to kits and substantial
differences are in reference to previously published designs.

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Europe

Registered and unregistered Community designs are

available which provide a unitary right covering the
European Community.

Protection for a registered Community design is for up to

25 years, subject to the payment of renewal fees every
five years. The unregistered Community design lasts for
three years after a design is made available to the public
and infringement only occurs if the protected design has
been copied.

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United Kingdom

In addition to the design protection available

under Community designs, UK law provides
its own national registered design right and
an unregistered design right. The unregistered
right, which exists automatically if the
requirements are met can last for up to 15
years.

The registered design right can last up to 25

years subject to the payment of maintenance
fees.

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United States

U.S. design patents last fourteen years from the date of grant and cover
the ornamental aspects of utilitarian objects. Objects that lack a use
beyond that conferred by their appearance or the information they
convey, may be covered by copyright -- a form of intellectual property
of much longer duration that exists as soon as a qualifying work is
created. In some circumstances, rights may also be acquired in trade
dress, but trade dress protection is akin to trademark rights and
requires that the design have source significance or "secondary
meaning." It is useful only to prevent source misrepresentations; trade
dress protection cannot be used to prevent others from competing on
the merits.

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Japan

Article 1 of the Japanese Design Law states:

"This law was designed to protect and utilize

designs and to encourage creation of designs in
order to contribute to industrial development".

The protection period in Japan is 15 years from

the day of registration.

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In Malaysia the Layout – Designs of Integrated Circuits Act 2000
which gives protection similar to copyright and patent right in respect
to original circuit layouts for integrated circuit. These right are
electronic layouts (EL) rights.

The person who first makes an eligible layout is the owner unless he
or she did so as an employee, in which case the owner is the
employer.

The owner of EL rights has the exclusive right to copy, manufacture

or to exploit the layout commercially.

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Integrated Circuit
s.2 LDIC 2000

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.

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Important Elements

Originality s.5(1) LDIC 2000

Qualification s.5(1) LDIC 2000

Reduce to material form s.5(4) LDIC 2000

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Originality

S.5(2)- a lay out design shall be original if-

It is the result of its creator’s own intellectual effort and is not
commonplace among creators of lay out designs and
manufacturers of integrated circuits at the time of its creation;or
In relation to a lay out design that consists of a combination of
elements and interconnections that are commonplace, the
combination taken, as a whole, is the result of its creator’s own
intellectual effort and is not commonplace among creators of lay
out –designs and manufacturers of integrated circuits at the time
of its creation

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Qualification s.6 LDIC 2000

Natural Person
National or domicile or resident of Malaysia or
qualifying country
Legal Entity
Incorporated or formed in Malaysia or in
qualifying country
Government
Government of Qualifying Country

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Reduce to material Form

S.2- material form –in relation to a lay

out design , includes any form of storage
(whether visible or not) from which the
lay out design, or a substantial part of
the lay out design, can be reproduced.

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Registration

No registration required
To enforce the rights of a right holder, evidence must be
submitted by affidavit to show that:s.18 LDIC 2000
The lay-out design is a protected one;
The plaintiff is the right holder
Ownership s.7 LDIC 2000
Creator
Commissioned work is the commissioner
Under employment is the employer

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Duration of Protection s.8 LDIC 2000

10 years from the date the lay-out design is first commercially

exploited in Malaysia
Lapse 15 years after the date the lay-out design is created.

Exclusive Rights s.9 LDIC 2000

The right to:-

Reproduce, and to authorize the reproduction of all or substantial part by
incorporation into an integrated circuit or otherwise;
Commercially exploit, and to authorize the commercially exploitation of
the integrated circuit.

Infringement s.10 LDIC 2000

Any person does or cause any other person to do the act under s.9

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Exclusions s.11 LDIC 2000

If the lay-out design is not original

If the reproduction done for a private purpose and not for commercial
exploitation
If the reproduction done for the sole purpose of evaluation, analysis,
research or teaching
Results from the evaluation, analysis or research be used to create a
different layout design that complies with element of originality.
Commercially exploit with the consent of the right holder

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Remedy s.13,15,16 LDIC 2000

Injunction,Damages or Account of profit

s.15 LDIC 2000

Delivery up
s.15 LDIC 2000

Order for disposal LDIC 2000

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Universities and technical institutes must
receive appropriate guidance so that
technological achievements are more widely
known and disseminated, not only to other
researchers, but applied in industry. In this
way they can be better used, and can best
justify the time, skills and other resources
expended on them.

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The process of intellectual property teaching and
research can only be effective if sufficient resources
are committed to them and to the effective
organization of educational and research programs.

To fulfill those requirements, government and

various sectors of the economy, as well as the
educational community, must work together. Each
must also offer to join their counterparts in other
countries to identify interests in common, so that the
mutual assistance through international cooperation
can function.

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A comprehensive syllabus covering the entire
course should be presented to the students on
the first day of the class.

A syllabus is a list of the topics to be

presented in the course and the reading
materials which correspond with each topic.
The syllabus provides an “educational road
map” for the students.

Thank you.

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