South-East Asia IPR Basics Series: Semiconductor Designs In Malaysia

3 May, 2016

 

Semiconductor topographies, or integrated circuit layout-designs (as they are known in Malaysia), are configurations of computer chips and other semiconductors which determine how they function. Layout-designs are specifically excluded from the list of articles which can be registered as industrial designs and are afforded their own category of protection, which is governed by the Layout-Designs of Integrated Circuits Act (2000). 

 

Malaysia does not have a registration system for semiconductor topographies and instead automatically protects all layouts as long as:

 

• The layout-design is original (“the result of its creator’s own intellectual effort”) and is not commonplace
• The layout-design have been “fixed in material form” and can be reproduced
• At the time the design was created, the owner of the layout-design rights was either
• a national or resident of Malaysia or any WTO state, or
• a business incorporated in or with a real commercial establishment for the production of integrated circuits in Malaysia or any WTO state, or
• the government of any WTO state

 

Exceptions to this are for employees and commissioned works, in which cases the person paying for the work will gain rights to the design. A layout-design is protected for a period of ten years starting from the date of its first commercial exploitation anywhere in the world. In any case, protection for layout-designs cannot extend beyond 15 years from the creation of the layout-design.

 

Enforcement

 

While you hold an integrated circuit layout-design, you are authorised to engage in or prevent anyone else from engaging in any of the following:

 

• Reproduce or authorise the reproduction of the layout-design in whole or in part, whether it is part of an integrated circuit or not
• Engage in or authorise commercial exploitation of the design or of a circuit containing the design 

 

Anyone engaging in these activities without your permission is liable for civil action. However, anyone who engaged in these activities without knowledge of the design (or without good reason to be aware of the design) is not considered to have infringed the rights granted by a layout-design certification, nor is anyone who reproduced your design for the exclusive purpose of evaluation, analysis, research, or teaching. In any case, no action may be taken for infringements more than six years old. 

 

Before taking civil or criminal actions, SMEs should strongly consider mediation. Firms with limited budget options and a need to quickly halt infringement can use mediation as a quick and cost-efficient means of halting infringement.

 

In litigation through IP courts, IP owners can bring cases before specialised Malaysian IP courts. These courts are empowered to issue injunctions which immediately halt infringement, to order that infringers destroy or hand over counterfeit chips, and to assign unlimited damages to be paid to the rights owners. Nine months is the proscribed maximum waiting time for these cases between filing and their day in court, offering a reasonable expectation of timely resolution. There are six “High Courts” (in Kuala Lumpur, Johor, Perak, Selangor, Sabah, and Sarawak) which focus on civil cases (as the damages are often difficult to quantify), as well as 15 “Sessions Courts” spread among the Malaysian states which focus on criminal cases and which have unlimited power to issue fines.