On December 14, 2020, the CNIPA released the leading case for administrative enforcement of intellectual property rights "Case of dispute over the infringement on the exclusive right of integrated circuit layout design between Wuxi New Silicon Microelectronics Co., Ltd. and Nanjing Rixin Technology Co., Ltd.". The interpretation and application of the leading case are explained as follows.

1. Election process and guiding significance

This leading case is the first case of an infringement dispute over the exclusive rights of integrated circuit layout designs judged by the Integrated Circuit Administrative Enforcement Committee of CNIPA(hereinafter referred to as the "Administrative Enforcement Committee"), which recommended it as a guiding case. On August 16, 2018, the Administrative Enforcement Committee made a decision handling the case and determined the claimant's infringement. After the decision was made, neither party filed an administrative litigation against the decision.

The Administrative Enforcement Committee has determined the following principles in the administrative adjudication of the leading case: confirming the carrier for the protection scope of the layout design shall be based on the copy or pattern with the integrated circuit sample as a reference.

2. The interpretation and explanation of the case’s main points

(1)Validity determination of right carrier

In accordance with Article 8 of the Regulations on the Protection of Layout-Designs of Integrated Circuits (hereinafter referred to as the Regulations), only registered layout-designs of integrated circuits can be protected by exclusive rights, registration is necessary for obtaining exclusive rights.

According to Article 16 of the Regulations, regardless of whether the layout design is put into commercial use, the copy or pattern is a constituent element for registration; only based on putting into commercial use, the integrated circuit sample becomes the registration element. For this aspect, obviously, the copy or pattern is at the core of the exclusive right carrier for layout design. In addition, the exclusive right of layout-design is established after registration, and it has the legal effect of public summons and public faith to the public, who can trust this publicity as a certain conduct. From this perspective, the layout-design reflected in the copy or pattern shall prevail.

As for the determination of the right carrier validity, the Administrative Enforcement Committee believed that for layout-designs that have not been put into commercial use while registration, the copies or pattern shall prevail. For the layout-design that has been put into commercial use during registration, if the copy or pattern can clearly and completely present all the details of the layout design, the copy or pattern shall prevail; if the details of the copy or pattern are not clear enough, and the protection scope of the exclusive right cannot be defined while relying on the copy or pattern alone, and the layout-design of the integrated circuit sample is consistent with the copy or pattern, the integrated circuit sample may be referred to clarify the unclear details of the copy or pattern.

(2) Determination of protection scope for the exclusive right of layout-design

In accordance with Article 4 of the Regulations, the protected layout-design should involve inventive step, or the combination as a whole should have inventive step although the layout-design consisting of conventional designs. According to Article 30 of the Regulations, all the copying conducts protected by the layout design or any part with inventive step of it, or commercial use conducts on integrated circuit protected by layout-design circuit or with it are all regarded as infringement. It can be seen that for the protection scope of the exclusive right of layout design, all the inventive areas of the layout design shall prevail.

Regarding how to ensure the protection scope of the exclusive right of layout-design, the Administrative Enforcement Committee believed that in consideration of the fact that the inventive step of the layout-design is not required to be declared while registration, in infringement disputes, the scope of protection of the exclusive rights claimed by the right holder should be determined in terms of the layout-design specified in the right carrier and combined with the statement on inventive step made by the rights holder in the request determines, and whether the infringement is established should be judged on the basis of the protection scope. In addition, the description of design ideas and functions involved in the inventive step statement of the right holder shall not be considered when determining the protection scope of the exclusive right of layout-design.

From CNIPA

April 8th, 2021