Right of action for integrated circuit design licencees

Although China’s integrated circuit industry has advanced in recent years, its independent innovation link is still weak and is more dependent on imports. Therefore, the use and manufacture of integrated circuits by Chinese enterprises by means of licensing of overseas rights holders is still a common business model. In cases of infringement, the costs for the overseas right holders to protect their rights in China are high, and it is more convenient for the licensees (such as Chinese enterprises) to defend their rights. Therefore, it is a real problem whether or not a licensee can obtain the rights of action from a rights holder by simply signing a licensing contract. Based on this, the right of action of the licensee with respect to the integrated circuit’s layout designs is briefly analyzed in this paper.

An integrated circuit has attributes of both the copyright and patent right, but also has its own particularities. First of all, an integrated circuit is a kind of layout design. The form of its expression is close to the nature of the works of the copyright, but this kind of layout design also has industrial practicality and this is contrary to the copyright spirit of protecting the expression not the practical function. Secondly, the core of an integrated circuit is its industrial practicality, which is close to the patent rights. But, the upgrading of the integrated circuits is mainly resolved by constantly decreasing the width of lithography lines to continually improve the integration scale, so the requirement for its innovation and iteration is that it only needs to reach the “non-conventional design” requirements, not the “creative” requirements in terms of the patent. To this end, all countries and TRIPSs have adopted specialized laws to protect the layout designs of the integrated circuits.

Chinese legislation only protects the layout designs of the integrated circuits at the administrative regulations and departmental rules levels. This is mainly enforced by the Regulations for the Protection of Layout Designs of Integrated Circuits promulgated by the State Council and the Implementing Rules for the Regulations for the Protection of Layout Designs of Integrated Circuits promulgated by the State Intellectual Property Office, and no protection at the legislative level like patent, trademark, or copyright is rendered. For the right of action of the intellectual property rights licensees, it is stipulated in the copyright law, patent rights law and the Regulations for the Protection of Layout Designs of Integrated Circuits that the relevant intellectual property rights holder or interested party has the right to bring an action in the people’s court when an infringement of intellectual property right happens (no similar provisions are in the copyright law). But as for how to define the “interested party” and whether the licensee always constitutes an “interested party”, there are different provisions in the corresponding judicial interpretations.