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Integrated Circuit Topography Act (S.C. 1990, c. 37)

Act current to 2022-07-25

Legal Proceedings (continued)

Action for Infringement (continued)

Marginal note:Power of court to grant relief

 In an action for infringement of the exclusive right in a registered topography, a court of competent jurisdiction may make such orders as the circumstances require, including orders providing for relief by way of injunction, the payment of royalties and the recovery of damages or profits, for punitive damages, and for the disposal of any infringing integrated circuit product or any article of which an infringing integrated circuit product forms a part.

Marginal note:Innocent infringement

 Where the exclusive right in a registered topography is infringed by reason of the commercial exploitation or importation of an integrated circuit product that incorporates the registered topography or a substantial part thereof and the defendant in an action for infringement establishes that, at the time the defendant acquired the integrated circuit product, the defendant did not know and had no reasonable grounds to believe that the integrated circuit product was manufactured and sold for the first time without the consent of the owner of the registered topography, the defendant

  • (a) is not liable for royalties, damages, profits or punitive damages in respect of any dealings with the integrated circuit product prior to the time when the defendant had actual knowledge that the product was manufactured and sold for the first time without the consent of the owner; and

  • (b) shall have the right to dispose of any inventory of the integrated circuit product or of the article of which the integrated circuit product forms a part that was acquired before the defendant had that knowledge, subject to the condition that the defendant pay a reasonable royalty in respect of that inventory in such amount and at such time as the court may determine.

Marginal note:Infringement after commercial exploitation in Canada

  •  (1) Where an integrated circuit product that incorporates a registered topography or a substantial part thereof is commercially exploited in Canada by or with the consent of the owner of the registered topography and an action for infringement is commenced in respect of an act of infringement committed after that commercial exploitation, the plaintiff is not entitled to any relief under section 9 other than by way of an injunction if the defendant establishes that, at the time of the infringement, the defendant was not aware and had no reasonable grounds to suspect that the topography was registered.

  • Marginal note:Exception

    (2) Subsection (1) does not apply if the plaintiff establishes that all or substantially all of the integrated circuit products that were commercially exploited in Canada by or with the consent of the owner of the registered topography before the infringement, or all or substantially all of the containers housing those integrated circuit products, were visibly marked with a title of the topography that is substantially the same as a title thereof that, at the time of the infringement, appeared on the register.

Marginal note:Limitation period

  •  (1) Subject to subsection (2), no royalties, damages, profits or punitive damages may be awarded for any act of infringement committed more than three years before the commencement of the action for infringement.

  • Marginal note:Exception

    (2) The limitation period described in subsection (1) does not apply if

    • (a) the infringement is of such a nature that, at the time of its commission, it would not have come to the attention of a reasonably diligent owner or licensee of any right in the registered topography; and

    • (b) the action for infringement is commenced within three years after the infringement came or should have come to the attention of the plaintiff.

Marginal note:Changes in register not applicable

 If any person has relied to the detriment of that person on any entry in the register as it read before being expunged or amended pursuant to this Act or any other Act of Parliament, a court of competent jurisdiction may order that the expungement or amendment not apply in any action for infringement of the exclusive right in a registered topography taken against that person or against any other person who has acquired from that person an integrated circuit product that incorporates the topography or a substantial part thereof.

Other Proceedings

Marginal note:Detention of infringing integrated circuit products

  •  (1) Where it is made to appear to a court of competent jurisdiction that an integrated circuit product has been imported into Canada or is about to be commercially exploited in Canada contrary to this Act, the court may make an order for the interim detention of the integrated circuit product or any article of which the integrated circuit product forms a part, pending a final determination of the legality of the importation or commercial exploitation in an action commenced within such time as is specified in the order.

  • Marginal note:Security

    (2) Before an order is made under subsection (1), the plaintiff or petitioner may be required to furnish security, in such form and in such amount as the court may determine, to answer any damages that may by reason of the order be sustained by the owner or consignee of the integrated circuit product or article and for any costs of storage or amount that may become chargeable against the integrated circuit product or article while it remains in detention under the order.

  • Marginal note:Indemnity

    (3) Subject to paragraph (4)(c), the plaintiff or petitioner in an action referred to in subsection (1) shall be liable to indemnify Her Majesty in right of Canada against any liability or expense that may result from the detention of an integrated circuit product or article pursuant to any order made under subsection (1), whether or not security is furnished pursuant to subsection (2).

  • Marginal note:Lien, disposal and indemnity

    (4) Where, by the judgment in an action referred to in subsection (1) that finally determines the legality of the importation or commercial exploitation of the integrated circuit product, the court finds that the importation is or the commercial exploitation would be contrary to this Act,

    • (a) any lien for charges against the integrated circuit product or article, or any hypothecs, prior claims or rights of retention within the meaning of the Civil Code of Québec or any other statute of the Province of Quebec with respect to the integrated circuit product or article, that existed prior to the date of an order made under subsection (1) has effect only so far as may be consistent with the due execution of the judgment;

    • (b) the court may make any order for the disposal of the integrated circuit product or article, including by way of exportation, distribution or destruction, after payment has been made of any taxes or duties owing in respect thereof under any Act of Parliament; and

    • (c) the owner or consignee of the integrated circuit product or article thereupon becomes jointly and severally liable, with the plaintiff or petitioner, to indemnify Her Majesty in right of Canada under subsection (3).

  • Marginal note:Who may make applications

    (5) Any order under subsection (1) may be made on the application of any interested person either in an action or otherwise and either on notice or ex parte.

  • 1990, c. 37, s. 14
  • 2001, c. 4, s. 90

General

Registration

Marginal note:Register

  •  (1) There shall be kept under the supervision of the Registrar a register for the registration of topographies and of information and material relating to each registered topography.

  • Marginal note:Register to be evidence

    (2) The register is evidence of the particulars entered therein and documents purporting to be copies of entries therein or extracts therefrom, that are certified by the Registrar, are admissible in evidence in any court without further proof or production of the originals.

Marginal note:Application for registration of topography

  •  (1) The creator of a topography or, where the topography has been transferred, the successor in title thereto may apply to the Registrar for registration of the topography.

  • Marginal note:Content of application

    (2) An application for registration of a topography shall contain the following information and material:

    • (a) one or more titles to identify the topography that conform to the prescribed requirements;

    • (b) the date on which, and place at which, the topography was first commercially exploited or, if the topography has not been commercially exploited, a statement to that effect;

    • (c) the name and address of the applicant;

    • (d) a statement describing the interest that the applicant holds in the topography; and

    • (e) such other information or material as may be prescribed.

  • Marginal note:Fee

    (3) An application for registration of a topography shall be accompanied by the prescribed fee or a fee determined in the prescribed manner.

Marginal note:Filing date

  •  (1) Subject to subsection (2), the filing date of an application for registration of a topography is the date on which the Registrar has received, in respect of the application, the information and material required by subsection 16(2) and the fee required by subsection 16(3).

  • Marginal note:Exception

    (2) The Registrar may, in such circumstances as are prescribed, assign a filing date to an application for registration of a topography notwithstanding that the requirements of subsection (1) have not been met.

  • Marginal note:Notice to applicant

    (3) Where the Registrar assigns a filing date to an application for registration of a topography pursuant to subsection (2), the Registrar shall notify the applicant of that date, of any information or material that is required to complete the application and the amount of the fee, if any, that remains unpaid.

  • Marginal note:Obligations of applicant

    (4) An applicant to whom notice is given in accordance with subsection (3) shall, within the prescribed period, file with the Registrar the information or material, if any, that is required to complete the application and the amount of the fee, if any, that remains unpaid and, in default thereof, shall be deemed to have abandoned the application.

Marginal note:Registration of topography

  •  (1) Subject to subsection (3), where the Registrar has received the information and material required by subsection 16(2) and the fee required by subsection 16(3) in respect of an application for registration of a topography, the Registrar shall register the topography by entering in the register the following:

    • (a) the filing date of the application;

    • (b) the title or titles of the topography that are contained in the application and that conform to the prescribed requirements; and

    • (c) such other information or material as may be prescribed.

  • Marginal note:No inquiry

    (2) The Registrar shall not inquire as to the accuracy of any information or material contained in an application for registration of a topography.

  • Marginal note:Registrar may refuse to register

    (3) The Registrar may refuse to register a topography if it appears to the Registrar, on the basis of any information or material contained in the application for registration, that the application was filed more than two years after the topography was first commercially exploited or that neither the condition set out in paragraph 4(1)(c) nor the condition set out in subsection 4(4) has been met.

Marginal note:Certificate of registration

  •  (1) The Registrar shall issue a certificate of registration in respect of each topography registered under this Act.

  • Marginal note:Contents of certificate

    (2) A certificate of registration issued in respect of a topography shall include the filing date of the application for registration of the topography, the date of expiration of the exclusive right therein and such other particulars as may be prescribed.

  • Marginal note:Presumptions

    (3) A certificate of registration issued in respect of a topography that purports to be signed by the Registrar is, without proof of the signature, admissible in any court as evidence of the facts therein alleged and is, in the absence of evidence to the contrary, proof that

    • (a) the topography was registrable under this Act at the time of the registration; and

    • (b) the application for registration of the topography was correct in all material particulars and did not omit any material information.

  • Marginal note:Correction of errors

    (4) The Registrar may, for the purpose of correcting any typographical or clerical error in a certificate of registration, amend the certificate or issue a new certificate in substitution therefor.

Marginal note:Invalidity of registration

 The registration of a topography is invalid if

  • (a) the topography was not registrable under this Act at the time of the registration; or

  • (b) the application for registration of the topography was incorrect in a material particular or omitted any material information, unless the incorrectness or omission occurred by mistake.

Marginal note:Registration of other particulars

  •  (1) The Registrar shall enter in the register particulars of any transfer of an interest or grant of a licence affecting a registered topography on being furnished with evidence of the transfer or grant that is satisfactory to the Registrar.

  • Marginal note:Changes in information

    (2) The Registrar may amend any entry in the register, or make new entries, for any of the following purposes:

    • (a) to reflect any change in the name or address of an owner of a registered topography;

    • (b) to reflect any change in a registered title of a topography or the use of a new title;

    • (c) to reflect any prescribed change of information; and

    • (d) to correct any typographical or clerical error.

Marginal note:Public inspection

 Subject to the regulations, the register, applications for registration of topographies and material filed with the Registrar in relation to any registered topography shall be made available for public inspection during regular business hours.

Jurisdiction of Federal Court

Marginal note:Concurrent jurisdiction

 The Federal Court has concurrent jurisdiction to hear and determine

  • (a) any action for the infringement of the exclusive right in a registered topography; and

  • (b) any question relating to the ownership of a topography or any right in a topography.

Marginal note:Exclusive jurisdiction

  •  (1) The Federal Court has exclusive original jurisdiction, on application of any interested person, to order that the registration of a topography or any other entry in the register be expunged or amended on the ground that the registration is invalid or that, at the date of the application, the entry as it appears does not accurately express or define the existing rights of any person appearing on the register as the owner of the topography.

  • Marginal note:Application

    (2) An application under subsection (1) may be made by the filing of an originating notice of motion, by counter-claim in an action for infringement or by statement of claim in an action claiming additional relief under this Act.

  • Definition of interested person

    (3) In subsection (1), interested person includes the Registrar, the Attorney General of Canada and persons who are affected or who reasonably apprehend that they may be affected by any entry in the register.

Registrar

Marginal note:Appointment of Registrar

  •  (1) There shall be a Registrar of Topographies who shall be designated by the Minister from among persons employed in the Department of Industry.

  • Marginal note:Duties

    (2) The Registrar shall perform the duties assigned to the Registrar by this Act and such duties as may be assigned to the Registrar by the regulations or by the Minister.

  • Marginal note:Acting Registrar

    (3) Where the Registrar is absent or unable to act or the office of Registrar is vacant, the Minister may designate any other person employed in the Department of Industry to perform the duties and exercise the powers of the Registrar for the time being.

  • 1990, c. 37, s. 25
  • 1992, c. 1, s. 145(F)
  • 1995, c. 1, s. 63
 
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