Protection of Layout-Designs (Topographies) of Integrated Circuits Act 2002

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Protection of Layout-Designs (Topographies) of Integrated Circuits Act 2002


No. 18 of 2002






C
T

PROTECTION OF LAYOUT-DESIGNS
(TOPOGRAPHIES) OF INTEGRATED

CIRCUITS ACT 2002

Protection of Layout-Designs (Topographies) of
Integrated Circuits Act 2002 Arrangement of Sections





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C
T

PROTECTION OF LAYOUT-DESIGNS
(TOPOGRAPHIES) OF INTEGRATED CIRCUITS

ACT 2002

Arrangement of Sections
Section

PART 1- PRELIMINARY 5
1 Short title and commencement.........................................................................5
2 Act binds the Crown ........................................................................................6
3 Interpretation....................................................................................................6
4 Protection .........................................................................................................6
5 Originality........................................................................................................6
6 Right to protection ...........................................................................................7
7 Effect of protection ..........................................................................................7
8 Commencement and duration of protection.....................................................8
9 Application requirements.................................................................................9
10 Registration....................................................................................................10
11 Transfer of application or registration ...........................................................10
12 Changes in the ownership ..............................................................................11
13 Cancellation ...................................................................................................11
14 Representation ...............................................................................................12
15 Infringement...................................................................................................12
16 Criminal liability............................................................................................12
17 Exploitation by a Government agency or third person ..................................12
18 Exercise of discretionary powers ...................................................................14
19 Jurisdiction of the Court.................................................................................14

Arrangement of Sections
Protection of Layout-Designs (Topographies) of

Integrated Circuits Act 2002





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20 Application of international treaties ...............................................................14
21 Regulations.....................................................................................................15

Protection of Layout-Designs (Topographies) of
Integrated Circuits Act 2002 Section 1





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C
T

PROTECTION OF LAYOUT-DESIGNS
(TOPOGRAPHIES) OF INTEGRATED CIRCUITS

ACT 2002

No. 18 of 2002

AN ACT TO MAKE PROVISION FOR THE PROTECTION OF
LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS

I assent,
TAUFA'AHAU TUPOU IV,

23rd December, 2002

[3rd September, 2002]

BE IT ENACTED by the King and Legislative Assembly of Tonga in the Legislature
of the Kingdom as follows:

PART 1- PRELIMINARY

1 Short title and commencement
(1) This Act may be cited as the Protection of Layout-Designs (Topographies)

of Integrated Circuits Act 2002.

(2) This Act shall come into operation on a date to be proclaimed by His
Majesty in Council.

Section 2
Protection of Layout-Designs (Topographies) of

Integrated Circuits Act 2002





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2 Act binds the Crown
This Act binds the Crown.

3 Interpretation
In this Act, unless the context otherwise requires, —

“integrated circuit” means a product, in its final form or 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/or on
a piece of material and which is intended to perform an electronic
function;

“layout-design” is synonymous with “topography” and means the three-
dimensional disposition, however expressed, of the elements, at least one
of which is an active element, and of some or all of the interconnections
of an integrated circuit, or such a three-dimensional disposition prepared
for an integrated circuit intended for manufacture;

“Minister” means the Minister of Labour, Commerce & Industries;

“Register of Layout-Designs” means the register maintained by the
Registrar under this Act;

“Registrar” means the Registrar of Industrial Property holding office
under the Industrial Property Act 1994;

“right holder” means the natural person who, or the legal entity which, is
to be regarded as the beneficiary of the protection referred to in section 7.

4 Protection
(1) Protection by way of registration under this Act may be obtained for

layout-designs of integrated circuits if and to the extent that they are
original within the meaning of section 5.

(2) Registration may only be applied for if the layout-design has not yet been
commercially exploited, or has been commercially exploited for not more
than two years, anywhere in the world.

5 Originality
(1) A layout-design shall be considered to be original if 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.

Protection of Layout-Designs (Topographies) of
Integrated Circuits Act 2002 Section 6





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(2) A layout-design consisting of a combination of elements and
interconnections that are commonplace shall be protected only if the
combination, taken as a whole, is original within the meaning of
subsection (1).

6 Right to protection
(1) The right to layout-design protection:

(a) shall belong to the creator of the layout-design;
(b) may be assigned or transferred by succession; or
(c) where several persons have jointly created a layout-design, the right

shall belong to them jointly.

(2) Where the layout-design has been created in execution of a commission or
an employment contract, the right to layout-design protection shall
belong, in the absence of contractual provisions to the contrary, to the
person who commissioned the work or to the employer.

(3) Protection under this Act shall not be available for layout-designs which
have been commercially exploited, anywhere in the world, for more than a
two year period prior to the commencement of this Act.

7 Effect of protection
(1) Protection under this Act shall not depend upon whether or not the

integrated circuit which incorporates the protected layout-design is itself
incorporated in an article. Subject to subsection (2) and to section 17, the
protection shall have the effect that the following acts shall be unlawful if
performed without the authorisation of the right holder —
(a) reproducing, whether by incorporation in an integrated circuit or

otherwise, the protected layout-design in its entirety or any part
thereof; except the act of reproducing any part that does not comply
with the requirement of originality referred to in section 5;

(b) importing, selling or otherwise distributing for commercial
purposes the protected layout-design, an integrated circuit in which
the protected layout-design is incorporated or an article
incorporating such an integrated circuit in so far as it continues to
contain an unlawfully reproduced layout-design.

(2) The effect of protection of a layout-design under this Act shall not extend
to —
(a) reproduction of the protected layout-design for private purposes or

for the sole purpose of evaluation, analysis, research or teaching;

Section 8
Protection of Layout-Designs (Topographies) of

Integrated Circuits Act 2002





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(b) the incorporation in an integrated circuit of a layout-design created
on the basis of such analysis or evaluation and which is itself
original within the meaning of section 5 or the performance of any
of the acts referred to in subsection (1) in respect of that layout-
design;

(c) the performance of any of the acts referred to in subsection (1)(b)
where the act is performed in respect of a protected layout-design,
or in respect of an integrated circuit in which such a layout-design
is incorporated, that has been put on the market by, or with the
consent of, the right holder;

(d) the performance of any of the acts referred to in subsection (1)(b) in
respect of an integrated circuit incorporating an unlawfully
reproduced layout-design or any article incorporating such an
integrated circuit where the person performing or ordering such an
act did not know and had no reasonable ground to know, when
acquiring the integrated circuit or the article incorporating such an
integrated circuit, that it incorporated an unlawfully reproduced
layout-design:
Provided however, that after receiving notice that the layout-design
was unlawfully reproduced, that person may perform any of the
said acts only with respect to the stock on hand or stock ordered
before receiving such notice and he shall be liable to pay to the
right holder a sum equivalent to a reasonable royalty such as would
be payable under a freely negotiated licence in respect of such a
layout-design; or

(e) the performance of any of the acts referred to in subsection (1)(b)
where the act is performed in respect of an identical layout-design
which is original and has been created independently by a third
party.

8 Commencement and duration of protection
(1) Protection of a layout-design under this Act shall commence —

(a) on the date of the first commercial exploitation, anywhere in the
world, of the layout-design by, or with the consent of, the right
holder, provided an application for protection is filed by the right
holder with the Registrar within the time limit referred to in section
4(2); or

(b) on the filing date accorded to the application for the registration of
the layout-design filed by the right holder, if the layout-design has
not been previously exploited commercially anywhere in the world.

Protection of Layout-Designs (Topographies) of
Integrated Circuits Act 2002 Section 9





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(2) Protection of a layout-design under this Act shall terminate at the end of
10 years after the date of commencement of protection.

9 Application requirements
(1) Applications for the registration of layout-designs shall be in writing and

shall be filed with the Registrar. A separate application shall be filed for
each layout-design.

(2) The application shall —
(a) contain a request for registration of the layout-design in the

Register of Layout-Designs and a brief description thereof,
(b) indicate the name, address, nationality and if different from the

address, the habitual residence of the applicant and, where
applicable, the applicant's representative in terms of section 14;

(c) be accompanied by a copy or drawing of the layout-design along
with information defining the electronic function which the
integrated circuit is intended to perform:

Provided however, the application may omit such parts of the copy or
drawing that relate to the manner of manufacture of the integrated circuit,
if the parts submitted are sufficient to allow the identification of the
layout-design;
(d) specify the date of first commercial exploitation of the layout-

design anywhere in the world or indicate that such exploitation has
not commenced; and

(e) provide particulars establishing the right to protection under section
6.

(3) If an application does not comply with the requirements of subsection (2),
the Registrar shall notify the applicant of the defects and invite him to
correct them within two months. If the defects are corrected within the
time limit, the Registrar shall record as the filing date the date of receipt
of the application:

Provided that, at the time of receipt, the application was accompanied by a
copy or drawing of the layout design and contained an express or implicit
indication that the registration of a layout-design was being requested and
sufficient information to establish the identity of the applicant.

(4) The Registrar shall confirm the filing date and communicate it to the
applicant. If the defects are not corrected within the time prescribed, the
application shall be deemed not to have been filed.

Section 10
Protection of Layout-Designs (Topographies) of

Integrated Circuits Act 2002





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(5) An application for registration of a layout-design shall be subject to the
payment of the prescribed fee. If the fee is not paid with the application,
the Registrar shall notify the applicant that the application will be deemed
not to have been filed unless payment is made within two months from the
date of the notification. If the application fee is not paid within that time
limit, the application shall be deemed not to have been filed.

10 Registration
(1) The Registrar shall maintain a register (the “Register of Layout-Designs”)

in which he shall, for each protected layout-design, enter all the
information required to be recorded as provided for in this Act.

(2) Where the application complies with the requirements of section 9, the
Registrar shall register the layout-design in the Register of Layout-
Designs without examination of the originality of the layout-design, the
applicant's entitlement to protection or the correctness of the facts stated
in the application.

(3) The Register of Layout-Designs shall contain the number, title, filing date
and, where indicated in the application under section 9(2)(d), the date of
first commercial exploitation, anywhere in the world, of the layout-design
as well as the name and address of the right holder and other prescribed
particulars.

(4) Any person may consult the Register of Layout-Designs and obtain
extracts therefrom, subject to the payment of the prescribed fee.

(5) The fact of the registration of a layout-design shall be published in the
Gazette.

11 Transfer of application or registration
(1) Where the essential content of an application has been taken from the

layout-design of another person without his consent, that other person
may, in writing, request the Registrar to transfer the application to him.
Where the application has already resulted in a registration, that person
may, within three years from the publication of the registration, in writing,
request the Registrar to transfer the registration to him and to rectify the
entry in the Register accordingly.

(2) The Registrar shall send forthwith a copy of such a request to the right
holder, and, within the prescribed period and in the prescribed manner, the
right holder may send to the Registrar a counter-statement of the grounds
on which he relies.

Protection of Layout-Designs (Topographies) of
Integrated Circuits Act 2002 Section 12





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(3) If the right holder sends a counter-statement, the Registrar shall furnish a
copy thereof to the person requesting the transfer and, after hearing the
parties, if either or both wish to be heard, and considering the merits of the
case, shall decide whether the application or registration should be
transferred and, where applicable, whether the Register should be
rectified.

12 Changes in the ownership
(1) Any change in the ownership of a protected layout-design shall be in

writing. Once the layout-design has been registered, the change in
ownership shall, at the request of any interested party, made to the
Registrar, be recorded and published by the Registrar. Such change shall
have no effect against third parties until such recording is effected.

(2) Any licence contract concerning a layout-design shall, upon registration of
the said layout-design, be submitted to the Registrar, who shall keep its
contents confidential but shall publish a reference thereto. The licence
contract shall have no effect against third parties until such submission
has been made.

13 Cancellation
(1) Any interested person may make a request to the Registrar that the

registration of a layout-design be cancelled on the grounds that —
(a) the layout-design is not capable of protection under sections 3, 4

and 5;
(b) the right holder is not entitled to protection under section 6; or
(c) where the layout-design has been commercially exploited,

anywhere in the world, before the filing of the application for
registration of the layout-design, the said application was not filed
within the time limit referred to in sections 4(2) and 8(1).

(2) Where the grounds for cancellation are established with respect only to a
part of the layout-design, only the corresponding part of the registration
shall be cancelled.

(3) A request for cancellation of the registration of the layout-design under
subsections (1) and (2) shall be filed with the Court in writing. The
request shall state the grounds on which it is based.

(4) Any cancelled layout-design registration, or part thereof, shall be regarded
as null and void from the date of the commencement of protection.

Section 14
Protection of Layout-Designs (Topographies) of

Integrated Circuits Act 2002





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(5) The final decision of the Court shall be notified to the Registrar who shall
record it and publish in the gazette a reference thereto as soon as possible.

14 Representation
Where an applicant's ordinary residence or principal place of business is outside
Tonga, he shall be represented by a law practitioner practising in Tonga.

15 Infringement
(1) Infringement shall consist of the performance of any act which is unlawful

under section 7.

(2) On the request of the right holder, or of a licensee if the latter has
requested the right holder to institute court proceedings for a specific
relief and the right holder has refused or failed to do so within a
reasonable period, the court may grant an injunction to prevent
infringement, award damages and grant any other remedy provided for in
law.

(3) An action under subsection (2) may be initiated only after an application
for registration of the layout-design has been filed with the Registrar.

16 Criminal liability
(1) Any authorised person who knowingly performs any act which is

unlawful under section 7 commits an offence and is liable upon conviction
to a fine not exceeding $5000 or to imprisonment for a term not exceeding
5 years or to both.

(2) The Court may also order the seizure, forfeiture and destruction of the
layout-designs, integrated circuits or articles concerned and of any
materials or implements, the predominant use of which has been in the
commission of the offence.

17 Exploitation by a Government agency or third person
(1) Where —

(a) the public interest, in particular, national security, nutrition, health
or the development of other vital sectors of the national economy
requires the exploitation of protected lay-out-design for public non-
commercial use; or

(b) a judicial or administrative body has determined that the manner of
exploitation of a protected layout-design, by the right holder or his

Protection of Layout-Designs (Topographies) of
Integrated Circuits Act 2002 Section 17





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licensee, is anti-competitive, and the Minister is satisfied that the
exploitation of the layout-design in accordance with this section
would remedy such practice;

the Minister may decide that, even without the authorisation of the right
holder, a Government agency or a third person designated by the Minister
may exploit the layout-design.

(2) The exploitation of the layout-design shall be limited, in scope and
duration, to the purpose for which it was authorised and shall be
predominantly for the supply of the domestic market. It shall be non-
exclusive and shall be subject to the payment to the right holder of an
adequate remuneration therefor, taking into account the economic value of
the Minister's authorisation, as determined in the Minister's decision and,
where applicable, the need to correct anti-competitive practices.

(3) Upon request of the right holder or of the beneficiary of the authorisation,
the Minister may, after hearing the parties, if either or both wish to be
heard, vary the terms of the decision authorising the exploitation of the
layout-design to the extent that changed circumstances justify such
variation.

(4)
(a) Upon the request of the right holder, the Minister shall terminate

the non-voluntary licence if he is satisfied that the circumstances
which led to his decision have ceased to exist and are unlikely to
recur or that the beneficiary of the authorisation has failed to
comply with the terms of the authorisation.

(b) Notwithstanding paragraph (a), the Minister shall not terminate an
authorisation if he is satisfied that the adequate protection of the
legitimate interests of the beneficiary of the authorisation justifies
the maintenance of the authorisation.

(5) Where a third person has been designed by the Minister, the authorisation
may only be transferred with the enterprise or busi-ness of the beneficiary
of the authorisation or with the part of the enterprise or business within
which the layout-design is being exploited.

(6) A request for the Minister's authorisation shall be accompanied by
evidence that the right holder has received, from the person seeking the
authorisation, a request for a contractual licence but that person has been
unable to obtain such a licence on reasonable commercial terms and
conditions and within a reasonable time.

(7) Decisions of the Minister under this section may be the subject of an
appeal to the Supreme Court.

Section 18
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Integrated Circuits Act 2002





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18 Exercise of discretionary powers
(1) The Registrar shall give any party to any proceeding before him an

opportunity of being heard before exercising adversely to that party any
discretionary power vested in him by this Act.

(2) The Registrar may upon such terms as he may direct, extend the time for
doing any act or taking any proceeding under this Act if he is satisfied that
the circumstances justify it. The extension of time is subject to the request
being made in writing and on notice to the parties concerned. The
extension may be granted though the time for doing the act or taking the
proceeding has expired. The time for filing an application referred to in
section 4(2) may not be extended.

19 Jurisdiction of the Court
(1) The Supreme Court shall have jurisdiction in cases of dispute relating to

the application of this Act and in matters which under this Act are to be
referred to the court.

(2) Any decision made by the Registrar under this Act, in particular any
decision relating to the registration of a layout-design, may be the subject
of an appeal to the Supreme Court by any interested party and such appeal
shall be filed within two months of the date of the decision.

20 Application of international treaties
(1) The provisions of any international treaties in respect of industrial

property to which Tonga is a party shall apply to matters dealt with by this
Act and, in the case of conflict with any provision of this Act, this Act
shall prevail.

(2)
(a) The provisions of any international treaties to which subsection (1)

applies shall be available for inspection and copying at the
Registrar's office, or at any other office designated by him, by any
person likely to be affected by it.

(b) Subject to subsection 2(a), no person shall be prosecuted or
convicted for contravening the provisions of international treaties in
subsection (1) if such provisions are not available for inspection or
copying as required by subsection (2)(a), and it is a defence to such
a prosecution to show that the contravened provisions were not so
available as required.

(c) The defence available under subsection (2)(b) is not available to a
person who had sufficient knowledge of the requirements of the

Protection of Layout-Designs (Topographies) of
Integrated Circuits Act 2002 Section 21





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contravened provisions for which he is being prosecuted, or who
possessed or who had reasonable access, in any event, to the
requirements of the contravened provisions independently of the
procedure under subsection 2(a).

(d) The Registrar may charge a reasonable fee for any copying services
he provides, commensurate to that charged in the Supreme Court,
when a person requests copies of provisions of international treaties
under subsection 2(a).

21 Regulations
(1) The Minister may with the consent of Cabinet make regulations for the

implementation of this Act.

(2) The regulations may provide for the payment of fees in connection with
applications for the registration of layout-designs of integrated circuits
and matters related thereto.



Passed in the Legislative Assembly this 3rd day of September, 2002.

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