| Obtaining Protection for Mask Works in the U.S. | | | | work"; "*M*" or the letter "M" enclosed in a circle |
| | | | and (2) the name of the mask work owner |
| I. Background | | | | provide constructive notice. Enforcement is via |
| The U.S. mask work registration law was first | | | | U.S. district court for plenary relief and via an |
| enacted in 1984. Semiconductor Chip Protection | | | | International Trade Commission proceeding (ITC) |
| Act of 1984, 17 U.S.C. ยงยง 901-14 ("SCPA"). The | | | | border enforcement (territorial exclusion). 17 USC |
| SCPA was enacted in the early days of IC | | | | 910 and 911. A presidential proclamation in 1996 |
| fabrication in response to certain identified acts of | | | | extended U.S. mask work protection to applicants |
| IC copying. However, until very recently, mask | | | | from all WTO countries. |
| work registrations in the U.S. were generally | | | | IV. Registration Requirements and Procedure |
| thought to be of little commercial value because | | | | The power to define regulations for registering |
| mere copying of IC masks (without knowledge of | | | | mask works is ceded by statute to the Registrar |
| the fabrication processing) was thought to provide | | | | of Copyrights, of the U.S. Library of Congress. 17 |
| little if any competitive advantage. However, the | | | | USC 908. The registrar prescribes use of form |
| appellate decision in Altera Corporation v. Clear | | | | MW for mask work registrations, and a $75.00 |
| Logic, Incorporated, 2005 Lexis 19284 (9th Cir. | | | | fee, per mask work registration. The Registrar |
| September 15, 2005) breathed new life into mask | | | | defines requirements for submissions at 37 CFR |
| work registrations. In this case, the appeals court | | | | 211 et seq. A mask work filing comprises at least: |
| found that ASICs manufacturer Clear Logic | | | | (1) Form MW, (2) payment for the fee, and (3) |
| infringed a mask registration of Altera in which | | | | deposited mask works. |
| the infringement related to the functionality and | | | | Form MW requires the following information: |
| *** general *** design of the masks and | | | | Title: (for example the name of the corresponding |
| corresponding programmable logic device ICs, as | | | | IC product) |
| opposed to a more narrow copyright type of | | | | Nature of Deposit: (for example, "3 acetate |
| "copying" protection initially envisioned by the | | | | sheets"; "3 photocopies of mask"; "2 ICs and 10 |
| SCPA. Clear Logic's business was based upon | | | | acetate sheets"). In this regard, acetate layers |
| receiving from a customer an Altera bit stream | | | | with opaque patterns have been used as actual |
| from Altera's chip design software and reverse | | | | chip mask. (It is unclear whether a paper |
| engineering an ASIC from the bit stream that | | | | photocopy would provide sufficient detail for small |
| would replace the original Altera programmable | | | | mask features.) The Deposit must be the most |
| logic device with a corresponding Clear Logic | | | | current form of the masks, subject to the |
| ASICs chip. It is clear from the opinion that the | | | | following exceptions: |
| extenuating factor of Clear Logic's business model | | | | (1) an averment that the owner does not have |
| swayed both the trial court and the appellate | | | | access to the most complete form. |
| court to accept a very broad scope of protection | | | | (2) owners of mask works in final forms of |
| of Altera's mask work registration. | | | | semiconductor chip products that are produced |
| II. Mask Work Registrations | | | | by adding metal-connection layers to |
| U.S. mask work registrations cover novel and | | | | unpersonalized gate arrays may separately |
| non-obvious aspects of mask designs used to | | | | register the entire unpersonalized gate array and |
| produce semiconductor ICs. Term of protection | | | | the custom metallization layers. (Applicants seeking |
| extends from date of registration to the end of | | | | to register separately entire unpersonalized gate |
| the tenth calendar year after registration (a little | | | | arrays or custom metallization layers should make |
| over 10 years). Mask work registrations are only | | | | the nature of their claim clear at Space 8 of |
| examined for formalities, and therefore issue | | | | application Form MW.) For these purposes, an |
| relatively promptly. | | | | "unpersonalized gate array" is an intermediate |
| IC chip mask work registrations cover's "mask | | | | form chip product that includes a plurality of circuit |
| works" which are defined as a series of images | | | | elements that are adaptable to be personalized |
| however fixed or encoded in which each image | | | | into a plurality of different final form chip |
| has the pattern of the surface of one form of | | | | products, in which some of the circuit elements |
| the semiconductor chip product. The initial owner | | | | are, or will be, connected as gates. |
| of the mask work under U.S. law (see 17 USC | | | | Owner information: name, address, citizenship |
| 901) is the employer of the person creating the | | | | Date and Nation of first commercial exploitation: |
| mask work (which means that no assignment to | | | | (of the actual chip produced from the mask |
| the company is required, unlike with U.S. patents). | | | | work) |
| The mask work's exclusive right extends (see 17 | | | | Nature of novel features: Brief description of |
| USC 902) to the original aspects of the mask | | | | novel features of the mask work, not otherwise |
| work that are not variations of commonplace or | | | | common in the semiconductor industry. |
| familiar designs. | | | | V. Conclusion |
| III. Notice and Enforcement | | | | Mask work registration is relatively inexpensive, |
| Registered mask works marked with (1) "mask | | | | quick, and appears to provide valuable protection. |