Topographies of Semiconductor Products
– Law 11/1988 of May 3, 1988, on the legal protection of topographies of semiconductor products (published in Industrial Property, September 1988); implementing Regulations approved by Royal Decree 1465/1988 of December 2, 1988.
– Royal Decree No. 149 of February 2, 1996 extending legal protection of semiconductor topographies to include nationals of member countries of the World Trade Organization.
– Article 273 of the Criminal Code of November 23, 1995.
– Decision of the Director of the Spanish Patent and Trademark Office, of February 6, 2019, approving the Guidelines for Examination of applications for patents, utility models, topographies of semiconductor products and industrial designs of the Spanish Patent and Trademark Office.
Conditions of Protection
Definitions: a semiconductor product means the final or intermediate form of any product: (a) consisting of a substrate which includes a layer of semiconducting material; (b) having one or more other layers of conducting, insulating or semiconducting material, arranged in accordance with a predetermined three-dimensional pattern; and (c) intended to perform, exclusively or together with other functions, an electronic function. The topography of a semiconductor product means a series of interconnected images, whatever the manner in which they are fixed or encoded: (a) representing the three-dimensional pattern of the layers of which the semiconductor product is composed; and (b) each image having the pattern or part of the pattern of one of the surfaces of the semiconductor product at any stage of its manufacture.
Right to protection: belongs to the creators of the topographies of semiconductor products. The Law acknowledges the rights in topographies created by an employee in the course of his employment contract or relationship with an undertaking, where the provisions of Part IV of the Patent Law shall apply.
Foreigners: protection applies to persons who are nationals of a member State of the European Union or who reside habitually on the territory of a member State and to legal persons which have a real and effective industrial or commercial establishment in a Union State. The government is authorized to extend the right to protection to persons of third countries or territories, who may not benefit from protection, if the bodies of the European Union deem this appropriate. Thus, individuals who are nationals of or reside in member countries of the World Trade Organization, and natural or legal persons who have a real and effective establishment for the manufacture of semiconductor topographies in the territory of a member country of the World Trade Organization shall benefit from such protection.
Filing requirements: applications to register topographies of semiconductor products must be filed at the Patent Office. Applications may cover only a single topography each and must comprise:
1. An application form;
2. A specification;
3. A graphic representation or other form of identification;
4. Any appropriate supplementary documentation;
5. Payment of official fees.
The Law establishes that they may be filed before commercial exploitation commences or within a maximum of two years from the date of commencement of exploitation. The material identifying or exemplifying the topography or a combination of those elements (which shall not be open to public inspection if it constitutes a trade secret) must be deposited with the application, as must a statement in a public document as to the date of first commercial exploitation of the topography, when that date precedes the date of the application for registration.
Duration: the exclusive rights to the exploitation of the topography of a semiconductor product shall come into existence on the earlier of the following dates: that on which the topography is first commercially exploited anywhere in the world, or that on which the application for registration is filed in due form. Those rights shall expire ten years from the end of the year they come into being. However, any registration relating to a topography, which is not commercially exploited anywhere in the world within a period of fifteen years from the date of its first fixation or encoding, shall cease to be effective.
Infringement: pursuant to the Revised Criminal Code (Organic Act No. 5/2010), the criminal offense of infringement is defined as manufacturing, importing, possessing, using, offering in trade, or introducing into trade the products protected by a semiconductor product topography for industrial or commercial purposes without the consent of the holder.
Penalties: as for “patents“. For issues relating to the criminal liability of legal persons, civil liability, and interlocutory relief, as for “patents”.