Cap. 445 LAYOUT-DESIGN
(TOPOGRAPHY) OF
INTEGRATED CIRCUITS
ORDINANCE
30/06/1997
An Ordinance to establish an intellectual property regime for the protection
of layout-designs (topographies) of integrated circuits.
[31 March 1994]
1. Short title
This Ordinance may be cited as the Layout-design (Topography) of
Integrated Circuits Ordinance.
2. Interpretation
(1) In this Ordinance, unless the context otherwise requires—
“commercially exploit” (商業開發) includes, by way of trade—
(a) to sell, let for hire or otherwise dispose of;
(b) to offer or expose for sale or hire or otherwise offer to
dispose of or expose for the purpose of disposing of; or
(c) to import for the purpose of sale, letting for hire or other
disposition;
“court” (法院) in sections 20 to 23 means the High Court of Justice;
“designer” (設計師), in the case of a computer aided design of a layout-design (topography), means the person who made the
arrangements for the creation of the layout-design
(topography);
“exclusive licence” (專用特許) means a licence in writing signed by or on behalf of a qualified owner authorizing the licensee to
the exclusion of all other persons, including the person
granting the licence, to exercise a right that would otherwise
be exercisable exclusively by the qualified owner;
“Government use” (政府徵用) means the doing of anything by virtue of the application of sections 19 to 23 that, but for the
application of those sections, would be an infringement of a
qualified owner’s rights under this Ordinance;
“integrated circuit” (集成電路) means a product, in its intermediate or final 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 on, or in or on, a piece of material
and which is intended to perform an electronic function;
“layout-design (topography)” (布圖設計 (拓撲圖 )) means the 3-dimensional disposition, however expressed, of the elements
of an integrated circuit (at least one of which is an active
element) and of some or all of the interconnections of an
integrated circuit, or such a 3-dimensional disposition
prepared for an integrated circuit intended for manufacture;
“protected layout-design (topography)” (受保護的布圖設計(拓撲 圖 )) means a layout-design (topography) that is protected under section 3 and, in sections 19 to 23, includes an
integrated circuit in which the protected layout-design
(topography) is incorporated;
“qualified owner” (合資格擁有人) means—
(a) a qualified person who, under subsection (2), is the
owner of a layout-design (topography); or
(b) a person who, under subsection (2), is the owner of a
layout-design (topography) which was not commercially
exploited anywhere else in the world before it was
commercially exploited in Hong Kong or in a qualifying
country, territory or area,
and includes a person, whether or not he is a qualified person,
who is a successor in title to a qualified owner of the layout-
design (topography);
“qualified person” (合資格的人) means—
(a) a natural person—
(i) who is domiciled or ordinarily resident or has the
right of abode in Hong Kong or in a qualifying
country, territory or area; or
(ii) who has a real and effective industrial or
commercial establishment for the creation of
layout-designs (topographies) or for the production
of integrated circuits in Hong Kong or in a
qualifying country, territory or area; or
(b) a person other than a natural person—
(i) the domicile, place of incorporation or place of
formation of which is in Hong Kong or in a
qualifying country, territory or area; or
(ii) which has a real and effective industrial or
commercial establishment for the creation of
layout-designs (topographies) or for the production
of integrated circuits in Hong Kong or in a
qualifying country, territory or area,
and includes the Government of Hong Kong and the
government of a qualifying country, territory or area;
“qualifying country, territory or area” (合資格國家、領域或地方) means a country, territory or area designated by the Governor
under section 24;
“reproduce” (複製), in relation to a layout-design (topography), includes copying the layout-design (topography) so as to make
an integrated circuit exactly or substantially to that layout-
design (topography).
(2) Subject to an agreement to the contrary, the owner of a layout-
design (topography) shall be determined as follows—
(a) where the layout-design (topography) is not created in
pursuance of a commission or in the course of
employment, the designer of the layout-design
(topography) is the owner;
(b) where the layout-design (topography) is created in
pursuance of a commission, the person who
commissioned the layout-design (topography) is the
owner; and
(c) where the layoutdesign (topography) is not created in
pursuance of a commission but is created by an
employee in the course of his employment, the employer
is the owner.
(3) A qualified person can be a qualified owner even if he shares
ownership with a person who is not a qualified person.
3. Protected layoutdesigns (topographies)
(1) This Ordinance protects a layoutdesign (topography) that is
owned by a qualified owner and—
(a) is original in the sense that it is the result of its creator’s
own intellectual effort and is not commonplace among
creators of layoutdesigns (topographies) and
manufacturers of integrated circuits at the time of its
creation; or
(b) in the case of a layoutdesign (topography) that consists
of a combination of elements and interconnections that
are commonplace, the combination, taken as a whole, is
original in the sense that it is the result of its creator’s
own intellectual effort and is not commonplace among
creators of layoutdesigns (topographies) and
manufacturers of integrated circuits at the time of its
creation.
(2) This Ordinance does not protect a layoutdesign (topography)
that is created before the commencement of this Ordinance.
(3) This Ordinance protects all independently created layout
designs (topographies) referred to in subsection (1), even if
they are identical and, subject to section 6, regardless of when
they are, on or after the commencement of this Ordinance,
created.
(4) A layoutdesign (topography) shall be deemed not to have
been created until it has been recorded in documentary form or
incorporated into an integrated circuit.
4. Rights of a qualified owner
(1) A qualified owner has the right—
(a) to reproduce, whether by incorporation into an integrated
circuit or otherwise, all or part of his protected layout
design (topography); or
(b) to commercially exploit his protected layoutdesign
(topography), an integrated circuit in which his protected
layoutdesign (topography) is incorporated or an article
that contains an integrated circuit in which his protected
layoutdesign (topography) is incorporated.
(2) It is an infringement of a qualified owner’s right in a protected
layoutdesign (topography) for any person other than the
qualified owner to do the acts referred to in subsection (1).
5. Noninfringing acts
Despite section 4(2), it is not, for the purposes of this Ordinance, an
infringement of a qualified owner’s right in a protected layout
design (topography)—
(a) if the reproduction or commercial exploitation is done
with the qualified owner’s consent;
(b) if the reproduction is done privately not for the purpose
of commercial exploitation;
(c) if the reproduction is done for the sole purpose of
evaluation, analysis, research or teaching;
(d) to use the results of an evaluation, analysis or research of
the layoutdesign (topography) to create a different
layoutdesign (topography) that would be a protected
layoutdesign (topography);
(e) for a qualified owner of a protected layoutdesign
(topography) that is, as referred to in section 3(3),
identical to the qualified owner’s protected layoutdesign
(topography) to do the acts referred to in section 4(1); or
(f) to commercially exploit an integrated circuit in which the
layoutdesign (topography) is incorporated or an article
that contains an integrated circuit in which the layout
design (topography) is incorporated after that integrated
circuit or that article has been put on the market
anywhere in the world with the qualified owner’s
consent.
6. Duration of layoutdesign (topography) protection
(1) A layoutdesign (topography) ceases to be a protected layout
design (topography) 10 years after the end of the year in which
it was first commercially exploited, with the qualified owner’s
consent, anywhere in the world.
(2) Where a layoutdesign (topography) has not been
commercially exploited, with the qualified owner’s consent,
anywhere in the world, within 15 years after the end of the
year in which it was created, it ceases to be a protected layout
design (topography) at the end of that time.
7. Civil remedies for infringement
(1) A qualified owner may take whatever proceedings and seek
whatever remedy by way of damages, injunctions, accounts or
otherwise with respect to an infringement of his rights in a
protected layoutdesign (topography) as are available with
respect to any other property rights.
(2) In any proceeding in which damages may be awarded, the
court may, having regard to all of the circumstances of the
case including the flagrancy of the infringement and any
benefit accruing to the defendant by reason of the
infringement, award additional damages.
8. Order for delivery up
(1) Where a person has in his possession, custody or control—
(a) for commercial exploitation purposes an integrated
circuit in which a protected layoutdesign (topography) is
incorporated; or
(b) anything specifically designed or adapted for making
integrated circuits to a particular layoutdesign
(topography), knowing or having reason to believe that it
has been or is to be used to make an integrated circuit in
which a protected layoutdesign (topography) is
incorporated,
a qualified owner of the protected layoutdesign (topography)
may apply to the court for an order that the integrated circuit
or the thing referred to in paragraph (b) be delivered to the
qualified owner or to another person that the court specifies.
(2) The court shall not make an order for delivery up unless it also
makes, or it appears to the court that there are grounds for
making, an order under section 9.
(3) An application for an order under this section shall not be
made after 6 years after the integrated circuit or the thing
referred to in subsection (1)(b) was made.
(4) Despite subsection (3), if during the whole or any part of the 6
years the qualified owner is under a disability or is prevented
by fraud or concealment from discovering the facts entitling
him to apply for an order, an application may be made at any
time before the end of 6 years after the date on which he
ceased to be under a disability or, as the case may be, could
with reasonable diligence have discovered the facts.
(5) A person to whom an integrated circuit or the thing referred to
in subsection (1)(b) is delivered up shall, if an order under
section 9 is not made at the time of the order under this
section, retain the integrated circuit or thing pending the
making of an order, or a decision not to make an order, under
section 9.
9. Order for disposal
(1) An application may be made to the court for—
(a) an order that the integrated circuit or the thing delivered
up under section 8 be forfeited to the qualified owner,
destroyed or disposed of as it specifies; or
(b) a decision that no order be made under paragraph (a).
(2) In deciding what order or decision to make under subsection
(1), the court shall consider whether other remedies available
to the qualified owner would be adequate to compensate or
protect his interest.
(3) Where there is more than one person who is an owner of the
layoutdesign (topography), the court may make whatever
order it considers appropriate under subsection (1) in order to
do justice between the owners and it may, in particular, direct
that the integrated circuit or the thing referred to in section
8(1)(b) be disposed of and the proceeds be divided among the
owners as the court directs.
(4) If the court decides that no order should be made under this
section, the person in whose possession, custody or control the
integrated circuit or the thing was before being delivered up is
entitled to its return.
10. Innocent infringement
(1) It is a defence in a proceeding to enforce a qualified owner’s
rights under this Ordinance for a person who commercially
exploits a protected layoutdesign (topography), an integrated
circuit in which a protected layoutdesign (topography) is
incorporated or an article that contains an integrated circuit in
which a protected layoutdesign (topography) is incorporated
to prove that he did not know, and had no reasonable grounds
to know, when he acquired the layoutdesign (topography),
integrated circuit or article that it was a protected layout
design (topography), that the integrated circuit incorporated a
protected layoutdesign (topography) or that the article
contained an integrated circuit in which a protected layout
design (topography) is incorporated.
(2) Where a person referred to in subsection (1) has become aware
that the layoutdesign (topography) is a protected layout
design (topography), that the integrated circuit incorporates a
protected layoutdesign (topography) or that the article
contains an integrated circuit in which a protected layout
design (topography) is incorporated he may commercially
exploit the protected layoutdesign (topography), the
integrated circuit in which the protected layoutdesign
(topography) is incorporated or the article that contains the
integrated circuit in which the layoutdesign (topography) is
incorporated but he is liable to pay to the qualified owner an
amount of royalty that would be payable under a freely
negotiated licence for the layoutdesign (topography).
(3) The right to commercially exploit under subsection (2) applies
only to a protected layoutdesign (topography), integrated
circuit or article that came into the possession, custody or
control of or was ordered by the person before he became
aware that the layoutdesign (topography) is a protected
layoutdesign (topography), that the integrated circuit
incorporated a protected layoutdesign (topography) or that the
article contained an integrated circuit in which a protected
layoutdesign (topography) is incorporated.
11. Presumption of protection and ownership
In a proceeding to enforce a qualified owner’s rights under this
Ordinance it shall be presumed, unless a defendant puts the matter
in issue, that in respect of the layoutdesign (topography) that is the
subjectmatter of the proceedings—
(a) the plaintiff is a qualified owner of the layoutdesign
(topography); and
(b) the layoutdesign (topography) is a protected layout
design (topography).
12. Affidavit evidence
(1) In a proceeding to enforce a qualified owner’s rights under this
Ordinance evidence may be submitted by affidavit asserting
facts relevant to show that—
(a) the plaintiff is a qualified owner of the layoutdesign
(topography); and
(b) the layoutdesign (topography) is a protected layout
design (topography).
(2) Where the court considers, on the application of a party, that
the deponent to an affidavit should be available to be cross-
examined with respect to matters asserted in the affidavit, it
shall exclude the admission of the affidavit without the
appearance of the deponent.
13. Groundless threat of proceedings
(1) Where a person, by means of circulars, advertisements or
otherwise, threatens another person with proceedings in
respect of an infringement of a right under this Ordinance,
then, whether or not the person making the threat is a qualified
owner, the court may, on the application of a person aggrieved,
do one or more of the following—
(a) declare that the threat is unjustified;
(b) grant an injunction against the continuance of the threat;
(c) award compensation for damage sustained.
(2) The court shall not make any order under subsection (1) if the
defendant satisfies the court that the acts in respect of which
the proceeding was threatened constituted, or would
constitute, an infringement of a qualified owner’s right under
this Ordinance.
(3) The mere notification of the existence of a right under this
Ordinance does not constitute a threat of a proceeding for the
purposes of subsection (1).
(4) An application may not be brought under this section where
the threat is to bring a proceeding for an infringement that is
alleged to consist of making or importing anything.
Dealings with a layout-design (topography) right
14. Assignments and licences of layout-design (topography)
(1) A right in a layout-design (topography) is movable property
and is therefore transmissible by any means by which such
property may be lawfully transmitted including assignment,
licence, testamentary instrument and operation of law.
(2) An assignment or transmission may be total or partial.
(3) An assignment is ineffective unless it is in writing and signed
by or on behalf of the assignor.
(4) A licence granted in respect of a layout-design (topography)
right by a qualified owner binds each successor in title to his
interest in the right, except a purchaser in good faith for value
without notice (actual or constructive) of the licence and a
person who derives title from the purchaser.
15. Prospective ownership of layout-design (topography)
(1) Where, by an agreement made in relation to a future right in a
layout-design (topography) that is signed by or on behalf of
the person who would be the owner of the right on its coming
into existence, the person purports to assign the future right in
the layout-design (topography), wholly or partially, to an
assignee, the right, on coming into existence, vests in the
assignee or his successor in title.
(2) A licence granted in respect of a future layout-design
(topography) right by a prospective qualified owner binds each
successor in title to his interest (or prospective interest) in the
right, except a purchaser in good faith for value without notice
(actual or constructive) of the licence and a person who
derives title from the purchaser.
16. Exclusive licence
(1) An exclusive licensee has the same rights against a successor
in title to the qualified owner as he has against the grantor of
the licence.
(2) An exclusive licensee has, except against the qualified owner,
the same rights and remedies in respect of matters occurring
after the grant of the exclusive licence as if the licence had
been an assignment.
(3) An exclusive licensee’s rights and remedies are concurrent
with those of the qualified owner.
(4) In a proceeding brought by an exclusive licensee a defendant
may avail himself of any defence that would have been
available to him if the proceeding had been brought by the
qualified owner.
17. Exercise of concurrent rights
(1) Where a proceeding for infringement of a qualified owner’s
right in a layout-design (topography) is brought by a qualified
owner or an exclusive licensee and the proceeding relates
wholly or partly to an infringement in respect of which they
have concurrent rights of action, neither of them, without
leave of the court, may continue with the proceeding unless
the other is joined as a plaintiff or added as a defendant.
(2) A qualified owner shall, by post or otherwise, notify any
exclusive licensee who has concurrent rights of action in
respect of an infringement of a layout-design (topography)
before applying for an order for delivery up under section 8,
and the court may on the application of the licensee make a
delivery up order that it considers just having regard to the
terms of the licence.
(3) Subsection (1) does not apply to an application by a qualified
owner or exclusive licensee for interlocutory relief.
(4) A qualified owner or exclusive licensee who is added as a
defendant pursuant to subsection (1) is not liable for costs in
the proceeding unless he takes part in the proceeding.
(5) Where a proceeding for infringement of a qualified owner’s
right in a layout-design (topography) is brought and the
proceeding relates wholly or partly to an infringement in
respect of which a qualified owner and an exclusive licensee
have concurrent rights of action—
(a) the court shall, in assessing damages, take into account
the terms of the licence and any pecuniary remedy
previously awarded or available to either of them in
respect of the infringement;
(b) the court shall, if an account of profits is directed,
apportion the profits between them as the court considers
just, subject to any agreement between them; and
(c) the court shall not, if an award of damages has been
made or an account of profits has been directed in favour
of either of them, direct that an account of profits be
made in favour of the other in respect of the
infringement.
(6) Subsection (5) applies whether or not the qualified owner and
the exclusive licensee are both parties to the proceeding.
Government use of protected layout-designs (topographies)
18. Declaration of extreme urgency
The Governor in Council may, for the purposes of applying sections
19 to 23, by regulation declare a period of extreme urgency
whenever he considers it necessary or expedient—
(a) for the maintenance of supplies and services essential to
the life of the community; or
(b) for securing sufficient supplies and services essential to
the life of the community.
19. Government use of protected layout-designs (topographies)
(1) During a period of declared extreme urgency a public officer
authorized in writing by the Governor may without the
consent of a qualified owner—
(a) do anything for the purpose of acquiring protected
layout-designs (topographies) for the non-exclusive use
of the Government for use in Hong Kong; or
(b) dispose of protected layout-designs (topographies).
(2) A person who acquires from a public officer a protected
layout-design (topography) disposed of under subsection (1)
may deal with it in the same manner as if the Government
were the owner of the protected layout-design (topography).
20. Terms for Government use
(1) Where Government use is made of a protected layout-design
(topography) the Government shall, unless the identity or
whereabouts of the qualified owner cannot be ascertained on
reasonable inquiry, by post or otherwise, notify the qualified
owner as soon as practicable and give him information from
time to time if the situation changes as to the extent of the
Government use of the protected layout-design (topography).
(2) Government use of the protected layout-design (topography)
shall be on terms that are, either before or after the use, agreed
to between the Government and the qualified owner or, where
no agreement is reached, on terms determined by the court.
21. Rights of third parties in case of Government use
(1) The provisions of a licence, assignment or agreement made
between a qualified owner (or any person deriving title from
him or from whom he derives title) and any person other than
the Government are of no effect in relation to Government use
of the qualified owner’s protected layout-design (topography)
so far as the provisions—
(a) restrict or regulate anything done in relation to the
protected layout-design (topography); or
(b) provide for the making of payments in respect of the use
or calculated by reference to the use.
(2) Where an exclusive licence is in force in respect of the
protected layout-design (topography)—
(a) if the licence was granted for royalties (including any
benefit determined by reference to the use of the
protected layout-design (topography))—
(i) any agreement between the qualified owner and the
Government under section 20 requires the consent
of the licensee; and
(ii) the licensee is entitled to recover from the qualified
owner whatever portion of the payment for
Government use under section 20 as they have
agreed or, in the absence of an agreement, as
determined by the court; and
(b) if the licence was granted otherwise than for royalties—
(i) section 20 applies in relation to anything done
which but for subsection (1) and section 19 would
be an infringement of the rights of the licensee,
with the substitution in those provisions of
references to the qualified owner with references to
the licensee; and
(ii) section 20 does not apply in relation to anything
done by the licensee by virtue of an authority given
under section 19.
(3) Where the protected layout-design (topography) has been
assigned to the qualified owner for royalties, section 20
applies in relation to Government use of the protected layout-
design (topography) as if the references to the qualified owner
included the assignor, and any payment for Government use
under section 20 shall be divided between them in whatever
proportion they have agreed or, in the absence of an
agreement, as determined by the court.
22. Compensation for loss of profit due to Government use
(1) Where Government use is made of a protected layout-design
(topography) the Government shall pay—
(a) to the qualified owner; or
(b) if there is an exclusive licence in respect of the protected
layout-design (topography), to the exclusive licensee,
compensation for any loss resulting from his not being
awarded a contract to supply integrated circuits in which the
protected layout-design (topography) is incorporated.
(2) Compensation is payable only to the extent that a contract
could have been fulfilled from the qualified owner’s or
exclusive licensee’s existing production capacity, but is
payable despite the existence of circumstances that would
render him ineligible for the award of such a contract.
(3) In determining the loss, regard shall be had to the profit which
would have been made on such a contract and to the extent to
which any production capacity was under-used.
(4) No compensation is payable in respect of any failure to secure
contracts for the supply of integrated circuits in which the
protected layout-design (topography) is incorporated,
otherwise than for the services of the Government.
(5) The amount payable is in addition to any amount payable
under section 20 or 21.
(6) The amount payable shall be determined by the court if it is
not agreed between the qualified owner or exclusive licensee
and the Government.
23. Determination of matters by the court
(1) A dispute as to any matter which is to be determined by the
court under section 20, 21 or 22 may be referred to the court
by application of any party to the dispute.
(2) In determining a dispute between the Government and any
person as to the terms for Government use of the protected
layout-design (topography), the court shall have regard to—
(a) any money which that person or a person from whom he
derives title has received or is entitled to receive, directly
or indirectly, from the Government in respect of the
protected layout-design (topography); and
(b) whether that person or a person from whom he derives
title has in the court’s opinion, without reasonable cause,
failed to comply with a request of the Government for
the use of the protected layout-design (topography) on
reasonable terms.
(3) One of 2 or more joint qualified owners of the protected
layout-design (topography) may, with the agreement of the
others, refer a dispute to the court under this section, but shall
not do so unless the others are made parties, and none of those
others is liable for any costs unless he takes part in the
proceedings.
(4) Where the consent of an exclusive licensee is required by
section 21(2)(a)(i), a determination by the court of the amount
of any payment to be made for Government use is ineffective
unless the licensee has been notified of the reference to the
court and given an opportunity to be heard.
(5) On the reference of a dispute under section 21(2)(a)(ii) as to
the portion recoverable, the court shall determine what is just
having regard to any expenditure incurred by the licensee—
(a) in developing the protected layout-design (topography);
or
(b) in making payments to the qualified owner in
consideration of the licence (other than royalties or other
payments determined by reference to the use of the
protected layout-design (topography)).
24. Designation of qualifying countries
(1) In this section “qualified owner” (合資格擁有人) means a person who is a qualified owner by virtue of relationship to
Hong Kong under the definition of qualified person.
(2) The Governor may, by regulation, designate a country,
territory or area as a qualifying country, territory or area if he
considers that provisions have been or will be made under the
laws of that country, territory or area that will give to a
qualified owner under this Ordinance adequate protection in
that country, territory or area.