LAYOUT-DESIGNS OF INTEGRATED CIRCUITS ACT 2000

Layout-Designs of Integrated Circuits LAWS OF MALAYSIA REPRINT Act 601 LAYOUT-DESIGNS OF INTEGRATED CIRCUITS ACT 2000 Incorporating all amendments up to 1 January 2006 PUBLISHED BY THE COMMISSIONER OF LAW REVISION, MALAYSIA UNDER THE AUTHORITY OF THE REVISION OF LAWS ACT 1968 IN COLLABORATION WITH PERCETAKAN NASIONAL MALAYSIA BHD 2006 1 2 LAYOUT-DESIGNS OF INTEGRATED CIRCUITS ACT 2000 Date of Royal Assent ... ... ... ... … 30 May 2000 Date of publication in the Gazette … … 15 June 2000 PREVIOUS REPRINT First Reprint ... ... ... ... ... 2001 3 LAWS OF MALAYSIA Act 601 LAYOUT-DESIGNS OF INTEGRATED CIRCUITS ACT 2000 ARRANGEMENT OF SECTIONS PART I PRELIMINARY Section 1. Short title 2. Interpretation 3. Application 4. Designation of qualifying countries PART II PROTECTION OF LAYOUT-DESIGNS 5. Protected layout-design 6. Persons that qualify for protection 7. Right holder of layout-design 8. Duration of protection PART III RIGHTS IN RELATION TO LAYOUT-DESIGNS AND INFRINGEMENTS 9. Rights of right holder 10. Infringement 11. Non-infringing acts 12. Innocent infringement 13. Actions for infringement 4 Laws of Malaysia ACT 601 Section 14. Limitation of actions 15. Order for delivery up 16. Order for disposal 17. Presumption of protection and right holder 18. Affidavit evidence P ART IV DEALINGS WITH LAYOUT-DESIGN RIGHTS 19. Assignments and licences 20. Future rights 21. Exclusive licensee 22. Exercise of concurrent rights P ART V USE FOR PUBLIC NON-COMMERCIAL PURPOSE AND COMPULSORY LICENSING 23. Interpretation of Part V 24. Use for public non-commercial purpose 25. Scope and nature of use for public non-commercial purpose 26. Duty to inform right holder of use for public non-commercial purpose 27. Right holder to be entitled to remuneration for use for public noncommercial purpose 28. Compulsory licence 29. Scope and nature of compulsory licence 30. High Court may terminate compulsory licence PART VI MISCELLANEOUS 31. Jurisdiction of High Court 32. Regulations 33. Savings Layout-Designs of Integrated Circuits 5 LAWS OF MALAYSIA Act 601 LAYOUT-DESIGNS OF INTEGRATED CIRCUITS ACT 2000 An Act to provide for the protection of layout-designs of integrated circuits in Malaysia and for related matters. [15 August 2000, P.U. (B) 263/2000] ENACTED by the Parliament of Malaysia as follows: PART I PRELIMINARY Short title 1. This Act may be cited as the Layout-Designs of Integrated Circuits Act 2000. Interpretation 2. (1) In this Act, unless the context otherwise requires— “action” means a civil proceeding commenced by writ or in such other manner as may be prescribed by rules of court and includes a counterclaim; “commercially exploit” includes— (a) to sell, let for hire or otherwise distribute by way of trade; (b) to offer or expose for sale or hire or other distribution by way of trade; and (c) to import for the purpose of sale, letting for hire or other distribution by way of trade; 6 Laws of Malaysia ACT 601 “compulsory licence” means the authorization to perform in Malaysia, without the agreement of the right holder of the protected layout-design, any act referred to in section 9; “creator”, in relation to a computer-aided design of a layoutdesign, means the person who made the arrangements for the creation of the layout-design; “exclusive licence” means a licence in writing, signed by or on behalf of a right holder authorizing the licensee, to the exclusion of all other persons including the person granting the licence, to exercise a right that would otherwise be exercisable exclusively by the right holder; “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; “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 threedimensional disposition prepared for an integrated circuit intended for manufacture; “material form”, in relation to a layout-design, includes any form of storage (whether visible or not) from which the layoutdesign, or a substantial part of the layout-design, can be reproduced; “protected layout-design” means a layout-design that is protected under section 5; “qualifying country” means a country or territory that is a Member to the World Trade Organization Agreement and includes a country or territory designated under section 4; “qualifying person” means a person who qualifies for the protection of this Act under section 6; “reproduction” means the act or process of copying the layoutdesign, directly or indirectly, in a material form; Layout-Designs of Integrated Circuits 7 “right holder” means the person that is to be regarded as the beneficiary of the protection referred to in section 9; “unauthorized”, in relation to— (a) a copy of a protected layout-design, means it is made without the consent of the right holder of the protected layout-design; and (b) an integrated circuit in which a protected layout-design is incorporated, means such incorporation is done without the consent of the right holder of the protected layout design; “World Trade Organization Agreement” means the Marrakesh Agreement Establishing the World Trade Organization done at Marrakesh on 15 April 1994. (2) A layout-design shall be taken to have been commercially exploited if the layout-design, a copy of the layout-design or an integrated circuit in which the layout-design is incorporated (whether or not the integrated circuit is contained in another article) is commercially exploited in Malaysia or elsewhere. (3) A reference to the doing of an act (other than creating) in relation to a layout-design includes a reference to the doing of that act in relation to a substantial part of the layout-design. (4) A reference to a copy of a layout-design includes a reference to a copy of a substantial part of the layout-design. (5) A reference to an integrated circuit made in accordance with a layout-design includes a reference to an integrated circuit in which the layout-design is substantially incorporated. Application 3. (1) This Act shall apply to a layout-design, whether created before or after the commencement of this Act, but an action under this Act shall not lie in respect of any act done before that commencement in relation to the layout-design, a copy of the layout-design or an integrated circuit in which the layout-design is incorporated. 8 Laws of Malaysia ACT 601 (2) Nothing in this Act shall be deemed to affect any action taken under any other written law relating to the protection of intellectual property rights that is pending on the commencement of this Act and such action shall be continued under the applicable written law until its final disposal. (3) Nothing in this Act shall be construed as reviving any protection for a layout design that had expired before the commencement of this Act. (4) This Act shall not apply in relation to any idea, procedure, process, system, method of operation, concept, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied in a layout-design. Designation of qualifying countries 4. (1) The Minister may, by order published in the Gazette, designate a country or territory as a qualifying country if he considers that provision has or will be made under the law of that country or territory that will give a right holder adequate protection in that country or territory in respect of a protected layout-design in which he has rights. (2) For the purpose of subsection (1), “right holder” means a right holder who is a qualifying person. PART II PROTECTION OF LAYOUT-DESIGNS Protected layout-design 5. (1) A layout-design shall be eligible for protection under this Act if the layout-design is an original layout-design and the right holder of the layout-design was, at the time the layout-design was created, a qualifying person. (2) For the purposes of subsection (1), a layout-design shall be original if— (a) it is the result of its creator’s own intellectual effort and is not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation; or Layout-Designs of Integrated Circuits 9 (b) in relation to a layout-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 layout designs and manufacturers of integrated circuits at the time of its creation. (3) This Act protects all independently created layout-designs referred to in subsection (1) even if they are identical and, subject to section 8, regardless of when they were created. (4) A layout-design shall be deemed not to have been created until it has been fixed in a material form or incorporated into an integrated circuit, whichever is earlier. Persons that qualify for protection 6. The protection given to a layout-design under this Act shall be available to the following persons: (a) a natural person who— (i) is a national of, or is domiciled or ordinarily resident in, Malaysia or in a qualifying country; or (ii) 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 in a qualifying country; (b) a legal entity that— (i) is incorporated or formed in Malaysia or in a qualifying country; or (ii) 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 in a qualifying country; (c) the Government; and (d) the government of a qualifying country. 10 Laws of Malaysia ACT 601 Right holder of layout-design 7. (1) Subject to any agreement to the contrary, the right holder of a layout design shall be determined as follows: (a) if the layout-design is not created in pursuance of a commission or in the course of employment, the creator of the layout-design is the right holder; (b) if the layout-design is created in pursuance of a commission, the person who commissioned the layout-design is the right holder; and (c) if the layout-design is created by an employee in the course of his employment, the employer is the right holder. (2) A person can be a right holder even if he shares the right in the layout-design with a person who is not a qualifying person. (3) If the right in a layout-design is held by more than one person— (a) a reference in this Act to the right holder is a reference to all the right holders; and (b) any requirement for the consent of a right holder requires the consent of all the right holders. (4) If a layout-design is owned by more than one person and such persons include a person who is not a right holder within the meaning of this Act, the protection specified in this Act shall only apply in relation to that part of the layout-design that is created by the right holder and all references in this Act to a protected layout-design shall be construed accordingly. Duration of protection 8. (1) A layout-design shall be protected under this Act for a period of ten years from the date the layout-design is first commercially exploited in Malaysia or elsewhere. (2) Notwithstanding subsection (1), the protection granted to a layout-design under this Act shall lapse fifteen years after the date the layout-design is created. Layout-Designs of Integrated Circuits 11 PART III RIGHTS IN RELATION TO LAYOUT-DESIGNS AND INFRINGEMENTS Rights of right holder 9. The right holder of a protected layout-design shall have the following rights: (a) the