Topographies of Semiconductor Products
– Law of Ukraine on Protection of Rights to Topographies of Integrated Circuits of November 5, 1997, last amended on September 26, 2019.
Applicant: a physical person or legal entity who filed an application for registration of a topography of integrated circuit.
Foreigners and nationals not living in the country: must appoint a patent attorney in Ukraine.
Definition of topography of integrated circuit: a space-geometrical layout of elements of integrated circuit and their mutual connections fixed on a material carrier.
Novelty: a topography of integrated circuit is deemed to be original if it has not been drafted by the way of direct copying of another topography of integrated circuit, has distinctive features due to which it has new properties, and was not known in the field of microelectronics before the date of filing of an application to the Patent Office or before the date of first industrial use.
Filing Office: the Ministry for Development of Economy, Trade and Agriculture of Ukraine.
Filing requirements for an application (to be sent to resident patent attorney):
1. Power of attorney (no legalization required);
2. Application form (may be signed by a representative);
3. Documents for identification or illustration of the topography:
(a) if there was no industrial use before the filing date, the application papers must include one complete set of visual materials illustrating each layer of the topography (masks, drawings of the layout or each layer, photos of each layer of the topography fixed in the integrated circuit) and an abstract;
(b) if there was industrial use before the filing date, the above-mentioned set of papers must be supplemented with 4 samples of IC, comprising the topography as it was marketed, and an abstract wherein besides the main technical characteristics of a sample of IC, the date of the first use is mentioned;
4. The document confirming the date of the first industrial use of the topography of integrated circuit.
Examination: only formal.
Opposition: an applicant may appeal against any decision of the Patent Office issued in the application before the Chamber of Appeals or the court within two months from the date of receipt of the official decision of the Patent Office. A decision of the Chamber of Appeals may be opposed before the court within two months from the date of receipt of the decision.
Registration: the Patent Office of Ukraine enters the topography of integrated circuit in the Register.
Publication: as for “Industrial Designs“.
Beginning of protection: the protection begins on the date of the first use (provided that the date of the first use is not earlier than two years before the application date), or, if there was no use before the application date, on the application date.
Duration: ten years from the date of the first use (provided that the date of the first use is not earlier than two years before the application date), or, if there was no use before the application date, from the application date.
Annuities: there are no annuities, only application fees.
Obligation to use: as for “Patents“.
Infringement and penalties: actions against infringements can be brought as explained for “Patents“. On the owner’s request, infringements of the rights to topographies of integrated circuits shall be barred, and the infringer shall compensate the owner for damages. Disputes relating to the amount of compensation and the procedure of payment for damages are considered by the courts. The court may also issue an order for destruction or confiscation of all integrated circuits made with the involvement of the infringement of the owner’s rights. The Law also provides for an imposition of a fine in the amount of 10% of the sum of compensation. Administrative and penal sanctions are the same as for “Patents“.
Assignment – license: registration with the Patent Office is not compulsory. A party to a license or assignment agreement may inform third persons about the grant of the license or assignment of rights. Such notice is made through the publication of the corresponding particulars in the Official Bulletin, and such particulars are simultaneously entered in the Register.
Modification of Protection after Registration
Cancellation: possible, only in the court. The registration of the topography of integrated circuits may be nullified if: (1) the topography is not registrable; (2) before filing an application for registration of a topography of integrated circuit in a foreign state, the applicant has not filed an application at the national Patent Office and has not informed the Patent Office of his intentions, unless otherwise is provided for by international agreements; (3) if an application was filed with the infringement of rights of third parties. Additionally, any person may request a complete examination of the registered topography of integrated circuits to determine whether it meets the requirements of registrability.