Integrated Circuit Topography Act (S.C. 1990, c. 37)

Short Title

Marginal note:Short title

1 This Act may be cited as the Integrated Circuit Topography Act.

Interpretation

Marginal note:Definitions

• 2 (1) In this Act,

  commercially exploit

  commercially exploit means to sell, lease, offer or exhibit for sale or lease, or otherwise distribute for a commercial purpose; (exploitation commerciale)

  filing date

  filing date, in respect of an application for registration of a topography, means the filing date of the application as determined in accordance with section 17; (date de dépôt)

  integrated circuit product

  integrated circuit product means a product, in a final or intermediate form, that is intended to perform an electronic function and 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, or both in and on, a piece of material; (circuit intégré)

  Minister

  Minister means the Minister of Industry; (ministre)

  national

  national, in respect of a country, includes an individual who is a citizen or resident of, or is domiciled in, that country; (ressortissant)

  prescribed

  prescribed means prescribed by regulations; (Version anglaise seulement)

  register

  register means the register kept pursuant to section 15; (registre)

  registered topography

  registered topography means a topography that is registered under this Act; (topographie enregistrée)

  Registrar

  Registrar means the Registrar of Topographies designated pursuant to section 25; (registraire)

  topography

  topography means the design, however expressed, of the disposition of

  • (a) the interconnections, if any, and the elements for the making of an integrated circuit product, or

  • (b) the elements, if any, and the interconnections for the making of a customization layer or layers to be added to an integrated circuit product in an intermediate form. (topographie)

• Marginal note:Deemed importation or commercial exploitation

  (2) For the purposes of this Act, where an integrated circuit product forms part of an article that is imported or commercially exploited, the integrated circuit product shall be deemed to be imported or commercially exploited, as the case may be.

• Marginal note:First commercial exploitation of topography

  (3) For the purposes of this Act, a topography is first commercially exploited when the topography or a substantial part thereof, or an integrated circuit product that incorporates the topography or a substantial part thereof, is commercially exploited for the first time in any place in the world by or with the consent of the person who owns the right to so commercially exploit the topography at that time and in that place.

• Marginal note:Deemed creator of topography

  (4) For the purposes of this Act, where a topography is created in the course of employment or pursuant to a contract, the employer or party to the contract for whom the topography was created shall be deemed to be the creator of the topography unless the employer and employee or the parties to the contract, as the case may be, otherwise agree.

Her Majesty

Marginal note:Binding on Her Majesty

2.1 This Act is binding on Her Majesty in right of Canada or a province.

Exclusive Right

Marginal note:Exclusive right on registration

• 3 (1) Subject to this Act, the registration of a topography under this Act, unless shown to be invalid, gives to the creator of the topography or, where the topography has been transferred, the successor in title thereto, an exclusive right in the topography for the duration of the period referred to in section 5.

• Marginal note:Scope of exclusive right

  (2) The exclusive right in a registered topography consists of the exclusive right to

  • (a) reproduce the topography or any substantial part thereof;

  • (b) manufacture an integrated circuit product incorporating the topography or any substantial part thereof; and

  • (c) import or commercially exploit the topography or any substantial part thereof or an integrated circuit product that incorporates the topography or any substantial part thereof.

• Marginal note:Rights not conferred

  (3) Nothing in this section confers any rights in relation to any idea, concept, process, system, technique or information that may be embodied in a topography or an integrated circuit product.

Marginal note:Conditions of registration

• 4 (1) Subject to subsection (4), a topography is registrable under this Act only if the following conditions are met:

  • (a) the topography is original;

  • (b) an application for registration of the topography, containing the information and material required by subsection 16(2) and accompanied by the fee required by subsection 16(3), is filed with the Registrar before the topography is first commercially exploited or within two years thereafter; and

  • (c) the creator of the topography is, at the time of its creation or on the filing date of the application,

    • (i) a national of Canada or an individual or legal entity that has in Canada a real and effective establishment for the creation of topographies or the manufacture of integrated circuit products,

    • (ii) a national of a country that, either directly or through its membership in an intergovernmental organization, affords protection for topographies in accordance with a convention or treaty to which that country or intergovernmental organization and Canada are contracting parties, or an individual or legal entity that has in such a country or in the territory of a member state of such an intergovernmental organization an establishment of the kind referred to in subparagraph (i),

    • (iii) a national of a country or of a member state of an intergovernmental organization that the Minister has certified by notice published in the Canada Gazette to be a country or intergovernmental organization that confers protection on nationals of Canada or legal entities that have an establishment of the kind referred to in subparagraph (i) that is substantially equal to the protection conferred by this Act, or an individual or legal entity that has in such a country or in the territory of a member state of such an intergovernmental organization an establishment of that kind, or

    • (iv) a national of a WTO Member.

• Marginal note:Originality

  (2) For the purposes of subsection (1), a topography is original if the following conditions are met:

  • (a) it has not been produced by the mere reproduction of another topography or of any substantial part thereof; and

  • (b) it is the result of an intellectual effort and is not, at the time of its creation, commonplace among creators of topographies or manufacturers of integrated circuit products.

• Marginal note:Combinations of elements or interconnections

  (3) Where a topography consists of a combination of elements or interconnections that are commonplace among creators of topographies or manufacturers of integrated circuit products, the topography shall be considered to be original only if the combination, considered as a whole, meets the conditions referred to in subsection (2).

• Marginal note:Exception

  (4) A topography that is not registrable by reason that the condition set out in paragraph (1)(c) cannot be met is registrable if the topography is first commercially exploited in Canada.

• Marginal note:Definitions

  (5) In this section,

  Commissioner

  Commissioner means the Commissioner of Patents; (commissaire)

  WTO Agreement

  WTO Agreement has the meaning given to the word “Agreement” by subsection 2(1) of the World Trade Organization Agreement Implementation Act; (Accord sur l’OMC)

  WTO Member

  WTO Member means a Member of the World Trade Organization established by Article I of the WTO Agreement. (membre de l’OMC)

Marginal note:Duration of exclusive right

5 The exclusive right in a registered topography shall subsist for a period

• (a) commencing on the filing date of the application for registration of the topography; and

• (b) terminating at the end of the tenth calendar year after the earlier of the calendar year in which the topography is first commercially exploited and the calendar year of the filing date of the application.

Marginal note:Infringement

• 6 (1) The exclusive right in a registered topography is infringed by any person who does any act referred to in subsection 3(2) without the consent of the owner of the registered topography.

• Marginal note:No infringement

  (2) Notwithstanding subsection (1), it is not an infringement of the exclusive right in a registered topography for any person

  • (a) to do any act referred to in paragraph 3(2)(a) or (b) in relation to that registered topography for the sole purpose of analysis or evaluation or of research or teaching with respect to topographies;

  • (b) to do any act referred to in subsection 3(2) in relation to another topography that is created on the basis of the analysis, evaluation or research referred to in paragraph (a) and that is original within the meaning of subsection 4(2) or (3);

  • (c) to do any act referred to in paragraph 3(2)(c) in relation to a particular integrated circuit product that incorporates that registered topography or a substantial part thereof, at any time after the time at which that particular integrated circuit product is sold in any place by or with the consent of the person who owned the right to sell that registered topography at that time and in that place;

  • (d) to do any act referred to in subsection 3(2) where that act is done for a private and non-commercial purpose; or

  • (e) to bring an integrated circuit product that incorporates that registered topography or a substantial part thereof temporarily into Canada if that integrated circuit product forms part of a vehicle, vessel, aircraft or spacecraft registered in a country other than Canada that enters Canada temporarily or accidentally and is used for a purpose that is necessary or ancillary to that vehicle, vessel, aircraft or spacecraft.

• Marginal note:No infringement

  (3) For greater certainty, it is not an infringement of the exclusive right in a registered topography for any person to do any act referred to in subsection 3(2) in relation to another topography that is independently created.

Marginal note:Transfer of topography

• 7 (1) A topography, whether registered or unregistered, is transferable, either as to the whole interest therein or as to any undivided portion thereof.

• Marginal note:Licence

  (2) A topography, whether registered or unregistered and either as to the whole interest therein or as to any portion thereof, may constitute the subject-matter of a licence.

Marginal note:Government may apply to use registered topography

• 7.1 (1) Subject to section 7.2, the Commissioner may, on application by the Government of Canada or the government of a province, authorize the public non-commercial use of a registered topography by that government.

• Marginal note:Terms of use

  (2) Subject to section 7.2, the use of the registered topography may be authorized for such purpose, for such period and on such other terms as the Commissioner considers expedient, but the Commissioner shall settle those terms in accordance with the following principles:

  • (a) the scope and duration of the use shall be limited to the purpose for which the use is authorized;

  • (b) the use authorized shall be non-exclusive; and

  • (c) any use shall be authorized predominantly to supply the domestic market.

• Marginal note:Notice

  (3) The Commissioner shall notify the owner of the registered topography of any use of the registered topography that is authorized under this section.

• Marginal note:Payment of remuneration

  (4) Where the use of the registered topography is authorized, the authorized user shall pay to the owner of the registered topography such amount as the Commissioner considers to be adequate remuneration in the circumstances, taking into account the economic value of the authorization.

• Marginal note:Termination of authorization

  (5) The Commissioner may, on application by the owner of the registered topography and after giving all concerned parties an opportunity to be heard, terminate the authorization if the Commissioner is satisfied that the circumstances that led to the granting of the authorization have ceased to exist and are unlikely to recur, subject to such conditions as the Commissioner deems appropriate to protect the legitimate interests of the authorized user.

• Marginal note:Authorization not transferable

  (6) An authorization granted under this section is not transferable.

Marginal note:Prescribed uses

7.2 The Commissioner may not, under section 7.1, authorize any use that is a prescribed use unless the proposed user complies with the prescribed conditions.

Marginal note:Appeal

7.3 Any decision made by the Commissioner under section 7.1 or 7.2 is subject to appeal to the Federal Court under the Patent Act.

Marginal note:Regulations

• 7.4 (1) The Governor in Council may make regulations for the purpose of implementing, in relation to registered topographies, paragraph 2 of Article 37 of the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement.

• Definition of WTO Agreement

  (2) In subsection (1), WTO Agreement has the same meaning as in subsection 4(5).

Legal Proceedings

Action for Infringement

Marginal note:Action for infringement

• 8 (1) An action for infringement of the exclusive right in a registered topography may be brought in any court of competent jurisdiction by the owner of the registered topography or by a licensee of any right therein, subject to any agreement between the licensee and the owner.

• Marginal note:Each owner to be party

  (2) Each owner of a registered topography shall be or be made a party to any action for infringement of the exclusive right therein.