LAYOUT-DESIGNS OF INTEGRATED CIRCUITS ACT

Arrangement of Sections

   Section

PART I
PRELIMINARY PROVISIONS

   1.   Short title

   2.   Interpretation

   3.   Application

   4.   Designation of qualifying country

   5.   Supremacy of Act

   6.   Act to bind Republic

PART II
ADMINISTRATION AND REGISTRATION OF LAYOUT-DESIGNS OF INTEGRATED CIRCUITS

   7.   Administration of Act and use of seal of Agency

   8.   Functions of Registrar and delegation of functions

   9.   Appointment of officers

   10.   Non-warranty and non liability

   11.   Patent agents

   12.   Register of layout-designs and integrated circuits

   13.   Protection of layout-designs

   14.   Application for registration

   15.   Registration of layout-designs

   16.   Advertisements of application

   17.   Opposition to registration

   18.   Corrections and amendments

   19.   Registration

   20.   Certificate of registration

   21.   Effect of registration of layout-design

   22.   Disclosure without qualified owner’s knowledge or consent

   23.   Refusal to register

   24.   Duration of protection

   25.   Restoration of lapsed registration

   26.   Registrar to furnish information from register

   27.   Certificate of status

   28.   Loss or destruction of certificate

   29.   Correction of clerical errors

   30.   Amendment of registered layout-design

   31.   Correction of register

   32.   Grounds for revocation of registration of registered design

   33.   Inspection of register and evidentiary proof

   34.   Regulations on registration processes and procedures

   35.   Industrial Property Journal

PART III
OWNERSHIP, LAYOUT-DESIGN RIGHTS AND LICENSING

   36.   Ownership of layout-design

   37.   Prospective ownership of layout-design

   38.   Exclusive rights of qualified owner

   39.   Compulsory licence

   40.   Transmission of layout-design

   41.   Registration of assignments and transmissions

   42.   Registered users

   43.   Registration as registered user

   44.   Rights of exclusive assignee or licensee

   45.   Cancellation of registered user

   46.   Call for information relating to registered user agreements

PART IV
PUBLIC NON-COMMERCIAL PURPOSES

   47.   Use for public non-commercial purpose

   48.   Scope and nature of right

   49.   Duty to inform qualified owner

   50.   Qualified owner entitled to remuneration

   51.   Reference of disputes as to Government use

   52.   Licence to remedy anti-competitive practice

   53.   Scope and nature of licence

PART V
INFRINGEMENT OF RIGHTS IN LAYOUT-DESIGNS

   54.   Infringement of layout-design

   55.   Non-infringing acts

   56.   Innocent infringement

   57.   Infringement proceedings where concurrent rights exist

   58.   Remedies for infringement

   59.   Order for delivery up

   60.   Order for forfeiture, destruction and disposal

   61.   No action for infringement of an unregistered layout-design

   62.   Affidavit evidence

   63.   Groundless threat of infringement proceedings

PART VI
GENERAL AND ENFORCEMENT PROVISIONS

   64.   Proceedings before Registrar

   65.   Registrar’s powers in obtaining evidence

   66.   Rules of evidence or procedure

   67.   Time and place of sitting

   68.   Extension of time

   69.   Registrar to act as soon as practicable

   70.   Infringement of rights

   71.   Appeals

   72.   References to High Court

   73.   Assessors to appear in High Court

   74.   Lodging and authentication of documents

   75.   Expenses relating to administration

   76.   Use of “registered”

   77.   Authorisation to publish advertisement or notice

   78.   Falsification of entries in register

   79.   Falsely representing a layout-design as registered

   80.   Altering of documents

   81.   Deceiving or influencing Registrar or officer

   82.   Witness giving false evidence

   83.   Manufacture and possession of die for use in commission of offence

   84.   Selling goods with false layout-designs

   85.   Administrative penalties

   86.   General penalty

   87.   Regulations

AN ACT

to establish a register for layout-designs or topographies of integrated circuits; to provide for a transparent legal framework for the protection, registration, rights over, infringement or use of, and access to, layout-designs or topographies of integrated circuits; to recognise, protect and support the inalienable rights and duties of qualified owners over their layout-designs or topographies of integrated circuits; to provide for the authorisation of exclusive assignments or licences by a qualified owner or prospective qualified owner of layout-design rights to an assignee or a licensee; to establish streamlined procedures for obtaining a compulsory licence, licence to remedy anti-competitive practices and use of layout-designs or topographies of integrated circuits for public or non-commercial purposes; to give effect to the provisions of the World Trade Organisation Agreement on Trade Related Aspects of Intellectual Property Rights, and any other relevant international treaty or convention to which Zambia is a State Party; and to provide for matters connected with, or incidental to, the foregoing.

[2nd June, 2017]

Act 6 of 2016,

SI 37 of 2017.

PART I
PRELIMINARY PROVISIONS

1.   Short title

This Act may be cited as the Layout-designs of Integrated Circuits Act.

2.   Interpretation

   (1) In this Act, unless the context otherwise requires—

“Agency” means the Patents and Companies Registration Agency established under the Patents and Companies Registration Agency Act, 2010;

“appropriate institution” means any Ministry having responsibility for, or such public or statutory officer or body having powers under any other law over, the regulation, collection, use, compilation or dissemination of information in relation to layout-designs or topographies of integrated circuits;

“Board” means the Board of the Agency constituted in accordance with the Patents and Companies Registration Agency Act, 2010;

“commercially exploit” in relation to a layout-design, a copy of the layout-design or an integrated circuit in which the layout-design is incorporated, whether or not the integrated circuit is contained in another article, means to—

   (a)   sell, let for hire or otherwise distribute by way of trade;

   (b)   offer or expose for sale or hire or other distribution by way of trade; or

   (c)   import for the purpose of sale, letting for hire or other distribution by way of trade; and

“commercially exploited”, “commercially exploiting” and “commercial exploitation” shall be construed accordingly;

“compulsory licence” means a licence granted by the Registrar in accordance with, and for the purposes stated in, section 39;

“creator” means a person who came up with the layout-design for an integrated circuit of a computer;

“examiner” means an officer who determines whether or not a layout-design should be registered in accordance with section 15;

“exclusive licence” means a licence, in writing, signed by or on behalf of a qualified owner authorising 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, and

“exclusive licensee”, “exclusive assignee” and “exclusive assignment” shall be construed accordingly, with the necessary modifications;

“integrated circuit” means a product, in its final form or an intermediate 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 a piece of material and which is intended to perform an electronic function;

“layout-design” means a functional design which consists of the pattern, shape or configuration of the three-dimensional disposition of the electrical, electromagnetic or optical elements and circuitry of an integrated circuit, and “integrated circuit” and “topography” shall be construed accordingly;

“material form” means any form of storage, whether visible or not, from which a layout-design, or a substantial part of the layout-design, can be reproduced;

“officer” means an employee or agent of the Agency;

“original” in relation to a layout-design, means the result of a creator’s own intellectual effort or which is not commonplace, at the time it was made, among creators of layout-designs and manufacturers of integrated circuits;

“prospective qualified owner” means, with respect to future layout-design rights that are—

   (a)   not the subject of an agreement of the kind referred to in sub-section (1) of section 37, the person who will be the qualified owner of those rights when they come into existence; or

   (b)   the subject of an agreement of the kind referred to in sub-section (1) of section 37, the person in whom those rights shall vest under that sub-section when they come into existence;

“protected layout-design” means a layout-design or topography in respect of which the conditions of protection specified in this Act are fulfilled;

“public non-commercial purpose” means an act which is done—

   (a)   for the defence or national security of Zambia; or

   (b)   to assist in the exercise of powers and the implementation of civil defence measures during a state of emergency;

“qualified owner” means a person who is the owner of a layout-design or topography of integrated circuits, in accordance with section 15, or who is the owner of a layout-design which was not commercially exploited anywhere else in the world before it was commercially exploited in Zambia or in a qualifying country, and includes a person, whether or not that person is a qualified person, who is a successor in title to a qualified owner;

“qualified person” means—

   (a)   a natural person—

      (i)   who is a citizen of or is domiciled or ordinarily resident in Zambia or a qualifying country; or

      (ii)   who has a real and effective industrial or commercial establishment for the creation of layout-designs or for the production of topographies of integrated circuits in Zambia in a qualifying country; or

   (b)   a person, other than a natural person—

      (i)   whose place of incorporation or place of business is in Zambia or qualifying country; or

      (ii)   which has a real and effective industrial or commercial establishment for the creation of layout-designs or for the production of topographies of integrated circuits in Zambia or qualifying country,

and includes the Government and the government of a qualifying country;

“qualifying country” means—

   (a)   a country or territory, other than Zambia, which is a member of the World Trade Organisation; or

   (b)   a country or territory designated by the Minister as a qualifying country in accordance with section 4;

“register” means the register of layout-designs and integrated circuits registered and maintained in accordance with section 12;

“registered layout-design” means a layout-design registered in accordance with this Act or any other law before the commencement of this Act;

“Registrar” means the person appointed as Registrar under the Patents and Companies Registration Agency Act, 2010;

“reproduction” means the act or process of copying a layout-design in material form, whether directly or indirectly;

“World Trade Organisation” means the World Trade Organisation established by the Marrakesh Agreement done at Marrakesh on 15th April, 1994; and

“writing” includes an electronic message if the information contained therein is accessible so as to be usable for subsequent reference.

   (2) In this Act a reference to—

   (a)   doing an act to a layout-design includes doing that act to a substantial part of the layout-design; and

   (b)   a copy of a layout-design includes a copy of a substantial part of the layout-design.

3.   Application

   (1) This Act shall apply to registered layout-designs and topographies of integrated circuits.

   (2) Notwithstanding sub-section (1), an action relating to a layout-design, a copy of the layout-design or an integrated circuit, registered under any other law, before the commencement of this Act, shall be dealt with in accordance with the law that applied before the commencement of this Act.

   (3) Nothing in this Act shall be considered to affect any action taken under any other written law relating to the protection of intellectual property rights that is pending on the commencement of this Act and such action shall be continued and determined in accordance with the applicable written law.

   (4) Despite sub-section (1), this Act shall not apply to any idea, process or system, method of operation, concept, principle or discovery, regardless of the form in which it is described, explained, illustrated or embodied in a layout-design.

4.   Designation of qualifying country

The Minister may, by statutory instrument, designate a country or territory as a qualifying country if the Minister considers that provision has been or shall be made under the laws of that country or territory that shall give to a qualified owner, who is a qualified person, adequate protection in that country or territory in respect of a protected layout-design in which the qualified owner has rights.

5.   Supremacy of Act

Subject to the Constitution, where there is any inconsistency between this Act and any other written law relating to layout-designs or topographies of integrated circuits, this Act shall prevail to the extent of the inconsistency.

6.   Act to bind Republic

This Act binds the Republic.

PART II
ADMINISTRATION AND REGISTRATION OF LAYOUT-DESIGNS OF INTEGRATED CIRCUITS

7.   Administration of Act and use of seal of Agency

   (1) The Agency is responsible for the administration and implementation of this Act.

   (2) The Board may delegate the functions and powers of the Agency, specified under this Act, to the Registrar or an appropriate institution where the Board considers it necessary and expedient to do so for the better implementation of this Act.

   (3) The seal of the Agency, kept in terms of the Patents and Companies Registration Agency Act, 2010, shall be used for the purposes of this Act and the impression made for such purposes shall be judicially noticed.

8.   Functions of Registrar and delegation of functions

   (1) The Registrar shall, in addition to the Registrar’s other functions and powers specified in the Patents and Companies Registration Agency Act, 2010, and any other law, exercise the powers and perform the functions conferred on the Registrar in this Act.

   (2) The Registrar may, in writing, delegate to an officer, appointed under section 9, any of the functions and powers vested in the Registrar under this Act, except the power of delegation.

9.   Appointment of officers

The Board shall appoint one or more assistant registrars, such examiners and other officers as may be necessary for the implementation of this Act and who shall, subject to the control of the Registrar, exercise the powers or perform the functions conferred by this Act on an officer or as may be delegated by the Registrar.

10.   Non-warranty and non liability

An examination, investigation or any act undertaken in accordance with this Act shall not warrant the validity of such examination, investigation or act and no liability shall be incurred by a member of the Board, Agency, Registrar or any officer by reason of, or in connection with, any examination, investigation, act or other consequent proceeding.

11.   Patent agents

The provisions of the Patents Act relating to patent agents apply, with the necessary modifications, to this Act.

12.   Register of layout-designs and integrated circuits

The Agency shall establish and maintain a register of layout-designs and integrated circuits, in which shall be entered—

   (a)   particulars of layout-designs of integrated circuits;

   (b)   notices of matters which are required by or under this Act to be entered in the register; and

   (c)   such other matters affecting the validity or proprietorship of layout-designs of integrated circuits as the Registrar considers necessary.

13.   Protection of layout-designs

A layout-design shall be eligible for protection, by registration in accordance with this Part, if the layout-design qualifies for registration as specified in section 15.

14.   Application for registration

A qualified owner who is a qualified person may apply for the registration of a layout-design in the prescribed manner and form accompanied by prescribed fee.

15.   Registration of layout-designs

   (1) A layout-design may be registered if it is owned by a qualified owner, who is a qualified person, and—

   (a)   is original; or

   (b)   the layout-design consists of a combination of elements and interconnections that are not commonplace, the combination, taken as a whole, is original.

   (2) Subject to section 24, where there exist identical and independently created layout-designs which satisfy the requirements of sub-section (1), the layout-designs shall be protected regardless of when they were created.

   (3) A layout-design shall be considered not to have been created until it has been recorded in written form or incorporated into an integrated circuit, whichever is earlier.

   (4) The Registrar shall examine an application for registration of a layout-design and may refuse the application or accept the application unconditionally or subject to such amendments or modification as the Registrar considers necessary.

   (5) The Registrar may, where the Registrar determines after accepting an application for registration of a layout-design but before registering the layout-design that the layout-design does not comply with sub-section (1), and after hearing the applicant on the matter, withdraw the acceptance of the application.

   (6) A layout-design when registered in accordance with sub-section (5) is be deemed to have been registered from the date of application.

16.   Advertisements of application

   (1) Where an application of a layout-design has been accepted, the applicant shall, as soon as may be after acceptance, advertise the application as accepted in the prescribed manner, and the advertisement shall set forth all amendments or modifications subject to the application.

   (2) Where after advertisement of an application—

   (a)   an error in the application has been corrected; or

   (b)   the application has been permitted to be amended under section 18,

the Registrar may in the Registrar’s discretion cause the application to be advertised again or, in any case falling under sub-section 2(b), may, instead of causing the application to be advertised again, notify the applicant in the prescribed manner the correction or amendment made in the application.

17.   Opposition to registration

   (1) Any person may, within two months from the date of the advertisement or re-advertisement of an application for registration give notice to the Registrar in writing in the prescribed manner and accompanied by a statement of the grounds of opposition.

   (2) The Registrar may allow for an extension of the notice period, not exceeding one month on application made to the Registrar in the prescribed manner.

   (3) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counterstatement of the grounds on which the applicant relies for the application and if the applicant does not do so, the applicant is deemed to have abandoned the application.

   (4) The Registrar may after considering the evidence and hearing any representations or arguments by the parties, decide whether registration is to be permitted and, if it is, with what amendments, modifications, conditions or limitations it is to be permitted.

   (5) An appeal shall lie from any decision of the Registrar under this section to the High Court.

18.   Corrections and amendments

The Registrar may upon payment of a prescribed fee by the applicant permit—

   (a)   at any time whether before or after acceptance of an application of registration under section 16, the correction of any error in or in connection with the application or permit an amendment of the application; or

   (b)   the correction of any error in or an amendment of, a notice of opposition or counterstatement under section 17.

19.   Registration

   (1) Subject to the provisions of section 15(5), when an application for the registration of the layout-design has been accepted and either—

   (a)   the application has not been opposed and time for notice of opposition has expired; or

   (b)   the application has been opposed and the opposition has been decided in favour of the applicant,

the Registrar shall, unless the application has been accepted in error or unless the Tribunal or Supreme Court otherwise directs, register the layout-design, and once registered, the date of the application is deemed to be the date of registration, except that the foregoing provisions of this sub-section, relating to the date as of which a layout-design shall be registered and to the date to be deemed to be the registration, shall, as respects a layout-design registered under this Act with the benefit of any enactment relating to international arrangements, have effect subject to the provisions of the enactment.

   (2) On the registration of a layout-design, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the Layout-Design of Integrated Circuits Registry.

   (3) Where registration of a layout-design is not completed within 12 months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

   (4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.

20.   Certificate of registration

The Registrar shall, after entering the layout-design in the register, as provided in sub-section (5) of section 15, issue a certificate of registration, in the prescribed form, to the qualified owner and cause to be published, in the prescribed form, a notice of the registration in the Industrial Property Journal.

21.   Effect of registration of layout-design

The effect of registration of a layout-design shall be to protect the layout-design and grant a qualified owner, within Zambia, subject to this Act, for the duration of the registration, the right to exclude other persons from reproducing, making, importing, using or disposing of the registered layout-design.

22.   Disclosure without qualified owner’s knowledge or consent

The registration of a layout-design shall not be invalid if the layout-design was disclosed, used or known prior to the registration of the layout-design without the knowledge or consent of the qualified owner and the qualified owner applied for registration of the layout-design with all reasonable diligence before learning of the disclosure, use or knowledge.

23.   Refusal to register

Where an application is not compliant with section 15, is not made in the prescribed manner and form or if the qualified owner has not paid the prescribed fee, the Registrar shall refuse to register the layout-design and return the application to the qualified owner.

24.   Duration of protection

   (1) A registered layout-design shall be protected for a period of 10 years from the date of application for registration and may be renewed for a period of five years, subject to payment of a prescribed renewal fee.

   (2) Where the prescribed renewal fee is not paid, within a prescribed period, the registration of the layout-design shall lapse, except that the Registrar may on application and subject to the payment of such additional prescribed fee, extend the period for the payment of the prescribed renewal fee for a period not exceeding six months.

   (3) Notwithstanding sub-section (1), the protection granted to a layout-design shall cease after 15 years from the date of application for registration of the layout-design.

25.   Restoration of lapsed registration

   (1) Where the registration of a layout-design has lapsed owing to non-payment of the prescribed renewal fee within the prescribed period or the extended period, in accordance with sub-section (2) of section 24, the qualified owner may, in the prescribed manner and form and on payment of the prescribed fee, apply to the Registrar, within six months from the extended period, for the restoration of the registration of the layout-design.

   (2) If the Registrar is satisfied that the omission to pay the prescribed renewal fee was unintentional and that no undue delay has occurred in the making of the application, the Registrar shall advertise the application in the prescribed manner, and any person wishing to object to the registration shall do so within a prescribed period, manner and form.

   (3) The Registrar shall, where there is no objection to the restoration of the lapsed registration, subject to the payment of such fee that remains to be paid, restore the registration of the layout-design and issue a certificate of payment of renewal fee to the qualified owner.

   (4) The Registrar shall, where there is an objection to the restoration of the lapsed registration, after investigating the matter and hearing the applicant and the objector, restore the registration and issue a certificate of payment of renewal fee to the qualified owner or dismiss the application for restoration of the lapsed registration of the layout-design.

26.   Registrar to furnish information from register

Subject to this Act, the Registrar shall, upon request of any person and on payment of a prescribed fee, furnish copies of any document lodged in the register or particulars from the register.

27.   Certificate of status

The Registrar may, upon request of any person and on payment of a prescribed fee, issue a certificate of status of a registered layout-design which shall be conclusive evidence of the registered layout-design as of the date and time of the issuance of the certificate of status.

28.   Loss or destruction of certificate

Where the Registrar is satisfied that a certificate of registration issued in accordance with section 20 has been lost or destroyed, the Registrar may, on payment of a prescribed fee, cause a duplicate of the certificate of registration to be sealed and issued to the qualified owner.

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