Figure I24

A microfluidics chip produced by Fluidigm Corp. The chip, which is about 3 inches x 4 inches, allows researchers to investigate all combinations of one set of 96 fluids with another set of 96 fluids—a total of 9216 experiments conducted simultaneously on a single chip. (Image reproduced with permission of Flur Corporation.)

In many respects, such microfluidics devices are like integrated circuits. Indeed, they are sometimes described as "integrated fluidic circuits." An analogy is made between the electronic functions of conventional integrated circuits and the biochemical functions performed with integrated fluidic circuits. Just as an electronic integrated circuit is designed with transistors to control the flow of current through the device, an integrated fluidic circuit is designed with pumps and valves that regulate the flow of fluid. The analogy is sometimes extended to note that the miniaturization that has been characteristic of the development of electronic integrated circuits is being repeated in integrated fluidic circuits, which have progressively been made to use smaller and smaller volumes of material.

Even the fabrication techniques used for electronic integrated circuits have been borrowed in the development of integrated fluidic circuits. For instance, one set of techniques for producing microfluidics chips forms a series of layers over a substrate, with patterns being created in the different layers. Just like with integrated circuits, the patterns may be created by using a mask to expose different portions of a given layer to light and thereby have that portion respond differently. This type of photolithography is virtually identical to the sort of photolithography used in producing integrated circuits. It is this type of patterning through the use of a mask that gave rise to the terminology "mask work" when referring to electronic structures; it seems only natural to apply the same terminology when the same kind of patterning is used to produce fluidics structures.

While the analogy between fluidics and electronics is a compelling one, there remain certain difficulties in being able to apply the Semiconductor Chip Protection Act to microfluidics devices in the United States. The first part of the definition of a "semiconductor chip product" in the act is satisfied in many microfluidics devices because the substrate that is used is a semiconductor. But there is not nearly as strong a need to use a semiconductor substrate in fluidics applications—after all, it is the electronic properties of a semiconductor that define it is as such, and these electronic properties are not of much relevance in fluidics applications. There are, for instance, many microfluidics devices that are formed over other types of substrates and that would therefore seem to be outside the scope of the act.

Perhaps more important, though, is the fact that microfluidics devices rarely satisfy the second part of the definition of a "semiconductor chip product" since they are usually not "intended to perform electronic circuitry functions." Some specialized applications can be imagined in which electronic functionality is incorporated into the microfluidics device, but in the absence of such functionality, it seems that these kinds of devices will not be afforded the sort of protection that the Semiconductor Chip Protection Act provides. When evaluating the applicability of this type of protection to other kinds of nanotechnology devices, a similar analysis should be performed.

This particular impediment to applying the Semiconductor Chip Protection Act for certain types of nanotechnology also exists in the parallel laws of other countries. While not as nearly universal as patent or copyright protection, many countries do include provisions to protect integrated circuit topographies. In defining the products to which the topography applies, most other countries do not require that the base material be a semiconductor, but do require the performance of "electronic functions" in the final product.46

It is interesting to ponder, from the perspective of how intellectual-property rights develop, why this requirement of "electronic functions" exists. After all, the other types of intellectual property that were discussed previously are defined in much more abstract terms. It is true that patents and copyrights both technically have subject matter constraints; but when these constraints are examined closely, there is not much that is excluded—provided that some invention is useful in the case of patents or that there is something creative produced in the case of copyrights. Applying the same kind of logic that has traditionally been applied to these other types of intellectual property, it would seem that the more important aspect of mask-work protection would be the pattern of the mask work itself, without particular concern to the functionality of devices produced using it.

Earlier, I touched on the fact that mask-work protection attempts to fill a gap between the protection patents provide and the protection that copyrights provide. In the late 1970s, this gap seemed especially acute. There was a concern among manufacturers of semiconductor chips that it was too easy to duplicate a chip design that had potentially taken months or years of time and millions of dollars to develop. Essentially all that would need to be done was to take a chip that had been released, strip away its layers, and then use the chip as a model for large-scale copying of the structure. But the way in which mask works integrate functional aspects made it difficult to apply copyright principles to the designs, and the designs themselves were too specific to make patent protection of significant value.

It was in this context that the United States Congress first considered how to provide intellectual-property protection to semiconductor chips. The goal was to address what was viewed as a relatively narrow problem without disturbing other forms of intellectual property. At the time, other forms of integrated circuits were as yet unconceived so that their deliberations were focused centrally around electronic chips. This focus is manifested in the form that the act finally took and which served as a model for similar intellectual-property rights in other countries.

Although integrated circuit topographies are now protected in a number of countries of the world, this form of intellectual property has received very little practical application in the quarter century or so that it has been available. In some ways, this is surprising given the emphasis that was placed on the need for such protection in the early 1980s. The major reasons for this are the relatively short term that is provided for such rights and the need to register the mask works. Basically, the term of protection begins on the earlier of the date that a mask work is registered with the copyright office or commercially exploited. The term then nominally lasts for ten years from that earlier date. But if the mask work is not registered within two years of commercial exploitation, mask-work rights are lost.

Could the development of nanotechnology result in a revival of mask-work protection? The answer to this is as yet unclear. Certainly the possibility of such a revival would be greater if the requirement of "electronic functions" in the final product were relaxed. This could potentially happen in two ways. The most decisive route would be for parts of the nanotechnology industry to lobby governments to note that the development of technology in the last twenty-five years has exposed a weakness in mask-work protection that should be repaired legislatively. This kind of development would be consistent with a respectable history. As technology advances, weaknesses in the definitions of intellectual property have often been identified and the general trend is for legislation to respond by expanding the subject matter that can be protected rather than by restricting it.

Another possibility is for a court to examine the legislative history of the Semiconductor Chip Protection Act and to determine that integrated circuit topography protections should apply to mask-work structures that are used in producing even devices that do not perform electronic functions. After all, courts have been instrumental in the past in clarifying that certain types of technology are indeed entitled to intellectual-property protection under existing doctrines. Perhaps the most striking examples of this in recent years are judicial decisions in the United States that genetically modified organisms47 and business methods48 are protectable.

These kinds of interpretive issues are interesting ones and often engender debate about what the relative roles of the judiciary and legislature should be. When courts engage in this kind of interpretive exercise, some complain that the judiciary is overstepping the boundaries set for it by interpreting a phrase in a way that the legislature could never have intended. Others respond that the very fact that there was no possibility for the legislature to conceive of the issue means that courts with a modern perspective must step in and provide a modern interpretation.

The question always boils down to whether this kind of interpretation is eviscerating the intent of the legislature or giving effect to it. While arguments are made on both sides in all areas of the law, the development of new technologies provides an acute illustration of the interpretation difficulties that courts often face. Nanotechnology was in its infancy at the time the Semiconductor Chip Protection Act was passed and the notion that there could be integrated fluidic circuits as well as integrated electronic circuits was completely unknown. Does inclusion of the word "electronic" in the statute do nothing more than reflect the unavoidable ignorance of the legislature or were there good independent reasons to be limiting in this way?

While this example of judicial interpretation is raised here in the context of intellectual-property issues, it is worthwhile considering the difficulties that a new technology like nanotechnology presents for judges in all areas of the law. It may be useful to keep this issue in mind when considering the regulatory and liability issues discussed in other parts of this book.

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