Transcript
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. Worldclass 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 oftquoted 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, ³Introduction to Intellectual Property´ or ³Patent, 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 ² 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 ³Introduction to Patent Law,´ ³Copyright Law and Practice,´ ³International Trademark Law,´ ³Intellectual Property Licensing,´ ³Unfair 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 ³Patent Office Practice,´ ³Copyright Litigation´ and ³Trial 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 ifIt 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 ³educational road map´ for the students. Thank you.
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