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Asadha 24, 1938, at 06:44:51 PM
The Registered Layout-Designs of Integrated Circuits
Ordinance, 2000
ORDINANCE No.
XLIX of 2000
[12th September, 2000]
An Ordinance to provide for the registration of
layout-designs of integrated circuits
WHEREAS Pakistan is a signatory
to the Agreement for the Establishment of the World Trade Organization and the
Agreement on Trade Related Aspects of Intellectual Property Rights for the
purpose of reduction of distortions and impediments to international trade and
for effective and adequate protection of intellectual property rights, and with
a view to meet obligations of Pakistan under the aforesaid Agreements and to
promote technological developments in the country, it is expedient to provide
for promotion of the development of semiconductor integrated circuits by
establishing a system for legal protection of registered layout-designs of
integrated circuits, and for matters ancillary thereto or connected therewith;
AND WHEREAS, the National Assembly and
the Senate stand suspended in pursuance of the Proclamation of the fourteenth
day of October, 1999, and the Provisional Constitution Order No. 1 of 1999;
AND WHEREAS, the President is satisfied
that circumstances exist which render it necessary to take immediate action;
NOW, THEREFORE, in pursuance of the
Proclamation of Emergency of the fourteenth day of October, 1999, and
Provisional Constitution Order No. 1 of 1999, as well as Order No. 9 of 1999,
and in exercise of all powers enabling him in that behalf, the President of the
Islamic Republic of Pakistan is pleased to make and promulgate the following
Ordinance:---
1. Short title, extent and
commencement.—(1) This Ordinance may
be called the Registered Layout- Designs of integrated Circuits Ordinance,
2000.
(2) It extends to the whole of
(3) It shall come into force at
once.
2. Definitions. In this Ordinance, unless there is anything
repugnant in the subject or context,---
(a) ”Controller”
means the Controller of Patents appointed under the Patents Ordinance, 2000;
(b) “District
Court” has the meanings assigned to that expression by the Code of Civil
Procedure, 1908 (Act V of 1908).
(c) ”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 or on a piece of material which
is intended to perform an electronic function;
(d) ”layout-design”
means a three dimensional disposition, howsoever expressed, of the elements,
at least one of which is an active element and of some or all of the
interconnection of an integrated circuit or such a three dimensional disposition
prepared for an integrated circuit intended for manufacture;
(e) ”Patent
Office” means the Patent Office established under the Patents Ordinance, 2000;
(f) ”prescribed”
means prescribed by rules made under this Ordinance;
(g) ”protection”
means the right to layout-design protection as provided under section 4;
(h) ”registration”
means registration under section 8;
(i) ”right-holder”
means the natural person who, or legal entity which, shall be the beneficiary
of the protection referred to in section 4; and
(j) “regulations”
means regulations made under this Ordinance.
3. 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 and manufacturers of layout-designs of
integrated circuits at the time of its creation.
(2) A layout-design consisting of a
combination of elements and inter-connections that are commonplace shall be
considered to be original if the combination taken as a whole fulfils the
conditions specified in sub-section (1).
4. Right to protections.—(1) The right to layout design protection shall be
available under this Ordinance if and to the extent, the layout-design is
original within the meaning of section 3 and has been subject of application
for registration.
(2) The right to layout-design
protection shall belong to the creator of the layout-design. Where several
persons have jointly created a layout-design, then such right shall belong to
them jointly.
(3) Where the layout-design has been
created in execution of 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 employee.
(4) The right to layout-design
protection shall be assignable or transferable by succession.
(5) The right to layout-design
protection shall not depend upon whether or not the integrated circuit which
incorporates the registered layout-design is itself incorporated in an article.
5. Effect of
protection.—(1) Subject to section
17, the protection shall have the effect that the following acts shall be
unlawful if performed without the authorization of the right-holder, namely:---
(i) reproducing,
whether by incorporation in an integrated circuit or otherwise, the registered
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 3; and
(ii)
importing, selling or otherwise distributing for commercial purpose the
registered layout-design, or an integrated circuit in which the registered
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 following acts shall not
require the authorization of the right holder, namely:---
(i)
reproduction of the registered layout-designs for private purposes or for the
sole purpose of evaluation, analysis, research or teaching
(ii) the
incorporation in an integrated circuit of a layout-design created on the basis
of such analysis or evaluation and which is itself original under section 3 or
the performance of any of the acts referred to in subsection (1) in respect of
that layout-design;
(iii) the
performance of any of the acts referred to in clause (ii) of sub-section (1)
where the act is performed in respect of a registered 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;
(iv) the
performance of any of the acts referred to in clause (ii) of sub-section (1) 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, when acquiring the
integrated circuit or the article incorporating such an integrated circuit,
that it incorporated an unlawfully reproduced layout-design. However, after the
time that such person has received sufficient 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 ordered before such time, and 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
(v) the
performance of any of the acts referred to in clause (ii) of sub-section (1)
where the act is performed in respect of an identical layout-design which is
original and has been created independently by a third party.
6. Commencement
and duration of protection. The
protection of a layout-design registered under this Ordinance shall commence on
the date of the first commercial exploitation anywhere in the world and shall
terminate at the end of the tenth calendar year from the date of such first
commercial exploitation.
7. Application for registration.—(1) An application for the registration of a layout
design shall be in writing and shall be filed with the Patent Office. A
separate application shall be filed for each layout-design.
(2) An application for the registration
of a layout-design may either be filed only if a layout-design has not been
commercially exploited or has been commercially exploited for not more than two
years.
(3) An application submitted under
sub-section (1) shall,---
(i) contain
a request for registration of the layout-design in the Register of
Layout-Designs and a brief an precise designation thereof;
(ii)
indicate the name, address, nationality and, if different from the address, the
habitual residence of the applicant;
(iii) be
accompanied by,---
(a) the
power of attorney, appointing the representative of the applicant, if any;
(b) a copy
or drawing of the layout-design and a sample of the integrated circuit
alongwith information defining the electronic function which the integrated
circuit is intended to perform, however, the applicant may omit such parts of
the copy or drawing related to the manner of manufacture of the integrated
circuit, provided that the parts submitted are sufficient to allow the
identification of the layout-design; and
(c) payment
of the prescribed fee to the Patent Office;
(iv) specify
the date of first commercial exploitation of the layout-design somewhere in the
world; and
(v) provide
particulars establishing the right to layout-design protection under section 4.
(4) Where the application does not duly
comply with the requirements of sub-section (3), the Controller shall inform
the applicant about the defects and ask him to make necessary corrections
within the prescribed time-limit.
(5) The Controller shall accord as the
filing date to be the date of receipt of the complete application in accordance
with the requirements of sub-section (3).
(6) The Controller shall confirm the
filing date and communicate it to the applicant.
(7) If the defects
are not corrected within the time-limit referred to in sub-section (4), the
application shall be deemed not to have been filed.
8. Registration.—(1) The Controller shall, where the application
complies with the requirement of section 7, after such enquiry as he thinks
fit, register the layout-design in the Register of Layout-Designs.
(2) The registration of a layout-design
shall be published in the official Gazette.
9. Register of Layout-Designs.—(1) The Patent Office shall maintain a register to be
called the “Register of Layout-Designs” in which it shall, for each registered
layout-design, effect all the recordings provided for in this Ordinance.
(2) The Register of Layout-Designs
shall contain the number, title, filing date and the date of first commercial
exploitation of the layout-design as well as the name and address of the right
holder and other particulars as may be prescribed.
(3) Any person may consult the
Register of Layout Designs and obtain extracts therefrom, on payment of the
prescribed fee.
10. Right to transfer and subsequent
rectification of Register of Layout-Designs.—(1) Where the essential contents of an application have been taken
from the layout-design of another person without his consent, such person may,
in writing, request the Controller to transfer the application to him.
(2) 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 Controller to
transfer the registration to him and to rectify the entry in the Register of
Layout-designs accordingly.
(3) The Controller shall send
forthwith a copy of such a request to the right-holder, and, within the
prescribed period and in the prescribed manner, such right-holder may send to
the Controller a counter-statement of the grounds on which he relies.
(4) If the right-holder sends a
counter-statement, the Controller 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 of Layout-Designs should be rectified
11. Change in the ownership of a
protected layout-design.—(1) Any
change in the ownership of a protected layout-design shall be in writing.
(2) Once the layout-design has been
registered the change in ownership at the request of any interested party, made
to the Patent Office, shall be recorded and published by the Controller. Such
change shall have no effect against third parties until such recording is
effected.
(3) An application for change in
ownership shall be accompanied by such fee as may be prescribed.
12.
Contractual Licences.—(1) Any licence
contract concerning a registered layout-design shall be submitted to the Patent
Office which shall keep its contents confidential but shall publish a reference
thereto.
(2) The licence contract shall have no
effect against third parties until such submission as referred to in
sub-section (1) has been made.
13. Cancellation.—(1) Any interested person may apply for cancellation
of registration of a layout-design on the grounds that:---
(i) the
layout-design is not protectable under sections 3 and 4;
(ii) the right holder is not entitled to protection under section 4; or
(iii) the layout-design has not been commercially exploited anywhere in
the world before the filing of the application for registration.
(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) An application for cancellation of
the registration of the layout-design under sub-sections (1) and (2) shall be
filed with the District 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.
(5) The final decision of the District
Court shall be communicated to the Controller who shall record it and publish a
reference thereto as soon as possible.
14. Representation. Where an applicant's ordinary residence or
principal place of business is outside
15. Infringement mid enforcement or
right.—(1) Infringement shall consist
of the performance of any act which is unlawful under section 5.
(2) On the request of the right holder,
or of his 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 District Court may grant an
injunction to prevent infringement or an imminent infringement and award
damages and grant any other remedy provided for in the relevant law in force.
(3) An action under sub-section (2) may
be initiated only after a layout-design has been registered under section 8.
16. Offences and penalties.—(1) Any person who, without authorization knowingly
performs any act which is unlawful under section 5 shall be guilty of an
offence punishable with imprisonment for a
term which may extend to two years, or with fine which shall not be less than
two hundred thousand rupees, or with both.
(2) The Court may also order the
seizure, forfeiture and destruction of the layout-designs of integrated
circuits or article; and of any materials or implements having been
predominantly used in the commission of the offence.
17. Exploitation in a Government
agency or third person.—(1) Subject
to sub-section (2), where,---
(i) the
public interest, in particular, national security, nutrition, health or the
development of other vital sectors of the national economy requires the
exploitation of a registered layout-design for public non-commercial use; or
(ii) a
judicial or administrative body has determined that the manner of exploitation
of a registered layout-design, by the right-holder, or his licensee, is
anticompetitive, and the Federal Government is satisfied that exploitation of
the layout-design in accordance with the provisions of this section would
remedy such practice, the Federal Government may, even without the consent of
the right holder, decide that a Government agency or a third person designated
by the Federal Government may exploit the layout-design.
(2) The Federal Government shall,
before taking any decision under sub-section (1), give the right-holder and any
interested person an opportunity of being heard if he wishes to be heard.
(3) The exploitation of a layout-design
shall be limited to the purpose for which it was authorized under sub-section
(1), and shall be subject to the payment to the right-holder of an adequate
remuneration therefore taking into account the economic value of the said
authorization as the Federal Government may determine.
(4) Upon request of the right-holder,
or of the beneficiary of the authorization under sub-section (1), the Federal
Government may after hearing the parties, if either or both wish to be heard,
vary the terms of the decision authorizing the exploitation of the
layout-design to the extent that changed circumstances justify such variation.
(5) Upon the request of the
right-holder, the Federal Government shall terminate the authorization if it is
satisfied that the circumstances which led to the decision have ceased to exist
and are unlikely to recur or that the beneficiary of the authorization under
sub-section (1) has failed to comply with the terms of such authorization.
(6) Notwithstanding the provisions of
sub-section (5), the Federal Government shall not terminate an authorization if
it is satisfied that the adequate protection of the legitimate interests of the
beneficiary of the authorization justifies the maintenance of such
authorization.
(7) Where a third person had been
designated by the Federal Government, the authorization may only be transfered
with the enterprise or business of the beneficiary of authorization or with the
part of the enterprise or business with which the layout-design is being
exploited.
(8)
A request for grant of authorization under sub-section (1) shall be accompanied
by evidence that the right-holder ha. received, from the person seeking the
authorization, a request for a contractual licence but that person has been
unable to obtain such licence on reasonable commercial terms and conditions and
within a reasonable time:---
Provided that this sub-section shall
not apply in cases of,---
(i) national
emergency or other circumstantial urgency provided that in such cases the owner
of the patent shall be informed of decision of the Federal Government as soon
as reasonably practicable;
(ii) public
non-commercial use; and
(iii)
anti-competitive practices determined as such by a judicial or administrative
body in accordance with clause (ii) of sub-section (1).
18. Exercise of discretionary power
and extension of time.—(1) The
Controller shall give any party to any proceeding before him an opportunity of
being heard before exercising any discretionary power under the provisions of
this Ordinance which may adversely affect such party.
(2) The Controller may, if he is
satisfied that the circumstances justify it, upon receiving a written request
therefor, extend the time for doing any act or taking any proceeding under this
Ordinance, upon notice to the parties concerned and upon such terms as he may
direct.
19. Appeal.—(1) An appeal shall lie to the High Court in cases of
dispute relating to the application of this Ordinance and in matters which
under this Ordinance are required to be referred to a District Court.
(2) An appeal shall lie to the High
Court against the decision of the Federal Government under section 17.
(3) An appeal shall lie to the High
Court against any decision taken by the Controller under this Ordinance in
particular the registration of a layout-design, by any interested party and
such appeal shall be referred within two months of the date of such decision.
20.
Surrender of right.—(1) The
right-holder may surrender his right to protection only with the approval of
the sole use grantee, or ordinary use grantee and pledgee, if any.
(2) A sole use grantee may surrender
his sole use right to protection only with the approval of the ordinary use
grantee and pledgee, if any.
(3) An ordinary use grantee may
surrender his ordinary use right to protection only with the approval of the
pledgee, if any.
21. Power to make rules.—(1) The Federal Government may, by notification in.
the official Gazette, make rules for carrying out the purposes of this
Ordinance.
(2) In particular and without prejudice
to the generality of the foregoing power, such regulations may provide for,---
(a) payment
of fee in connection with an application for registration of layout-design of'
integrated circuit and matters related thereto; and
(b) fee to
be paid to the Patent Office for obtaining copies of the relevant record of the
registered layout-design of integrated circuit from the Patent Office.
22. Power to make regulations. The Controller may, with the approval of Federal
Government, make regulations, not inconsistent with the rules, for carrying out
the purposes of this Ordinance.
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