Patent laws in the region vary in their effectiveness. Regulations across jurisdictions to crack down on infringers are in a constant state of renewal and revision in order to stay ahead of those who steal intellectual property. Keeping the trolls at bay depends on staying abreast of regional developments in patent law
Intellectual property law was first introduced to Sri Lanka during the British colonial period through legislation. The first statute on intellectual property (IP) law was the British Inventor’s Ordinance, which was made applicable to Sri Lanka, and the first patent was granted under this statute in 1860.
In 1907, the Patent Ordinance was enacted based on English patent law. The Patent Ordinance was in force until the Code of Intellectual Property Act No. 52 of 1979 was enacted, which repealed all previous IP statutes.
This code was divided into seven parts, and part IV included patents. The code was based on the WIPO (World Intellectual Property Organization) model Law.
In 2003, the Intellectual Property Act No. 36 of 2003 came into force, replacing the Code of Intellectual Property Act No. 52 of 1979, and it is the current law in operation since November 2003.
Intellectual Property Act No. 36 of 2003. Part IV of the IP Act refers to the law relating to patents. An Invention has been defined as an idea of an inventor, which permits in practice the solution to a specific problem in the field of technology. Both product and process patents are recognized in Sri Lanka.
Inventions not patentable:
- Discoveries, scientific theories and mathematical methods;
- Plants, animals and other micro-organisms other than transgenic micro-organisms, and an essentially biological process for the production of plants and animals other than non-biological and micro-biological processes;
- Schemes, rules or methods for doing business, performing purely mental acts, or playing games;
- Methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body, provided, however, any product used in any such method must be patentable;
- An invention that is useful in the utilization of special nuclear material or atomic energy in an atomic weapon; and
- Any invention, the prevention within Sri Lanka of the commercial exploitation of which is necessary to protect the public order, morality including the protection of human, animal or plant life or health, or the avoidance of serious prejudice to the environment.
Patentable inventions. An Invention is patentable if it is new, involves an inventive step and industrially applicable. An invention is new if it is not anticipated by prior art.
Prior art must consist of:
- Everything disclosed to the public, anywhere in the world, by written publication, oral disclosure, use or in any other way, prior to the filing date or, where appropriate, the priority date of the patent application claiming the invention: and
- The contents of a patent application made in Sri Lanka having an earlier filing or, where appropriate, priority date than the patent application referred to in paragraph (a), to extent that such contents are included in the patent granted on the basis of the patent application made in Sri Lanka.
A disclosure made under Section 64(2)(a) above will be disregarded: (1) If the disclosure occurred within one year preceding the date of the patent application, and if the disclosure or in consequence of acts committed by the applicant or his/her predecessor in title; (2) If the disclosure occurred within six months preceding the date of the patent application and if the disclosure was by reason or in consequence of any abuse of the rights of the applicant or his/her predecessor in title.
An invention must be considered industrially applicable if it can be made or used in any kind of industry.
Application procedure. An application for the grant of a patent must be made to the director general in the prescribed form and must contain: (1) A request for the grant of the patent; (2) A description of the patent; (3) A claim or claims; (4) A drawing or drawings, where required; (5) An abstract; (6) Date and number of any application for a patent filed by the applicant abroad (a foreign application), if any, relating to the same, or essentially the same invention as that claimed in the present application; (7) A declaration that the applicant or his/her predecessor in title has not obtained a patent abroad before the application was filed relating to the same or essentially the same invention as that claimed in the application.
Where the applicant’s ordinary residence or principal place of business is outside of Sri Lanka he/she must be represented by an agent resident in Sri Lanka.
Right to a patent. The right to obtain a patent belongs to the Inventor, and where two or more persons have jointly made an invention, the right to a patent must belong to them jointly.
Where the essential element of the invention claimed in a patent application or patent has been unlawfully derived from an invention for which the right to the patent belongs to another person, such other person may apply to the court for an order that the said patent application or patent be assigned to him/her.
Amendment and division of application. An applicant may amend the application provided that the amendment must not exceed the limits of the disclosure in the initial application.
An applicant may divide the application into two or more applications, called divisional applications, provided such divisional application must not exceed the limits of disclosure of the initial application.
Right of priority. An application may contain a declaration claiming the priority, pursuant to the convention, of one or more earlier national or regional or international applications filed by the applicant or his/her predecessor in title.
Search report. Every applicant is required to furnish an international-type search report to the director general in two copies within a period of three months from the date of issue of such international-type search report. If the international-type search report is not in English, an English translation of the report is required.
Rights conferred by patent protection. The owner of a patent must, during the period of protection, be entitled to the following exclusive rights: (1) Exploitation of patent; (2) Assignment or transmission of patent; and (3) Conclusion of licence contracts (voluntary licensing).
Limitation of rights. (1) Protection does not extend to acts done solely for the purpose of scientific research, or protection limited to acts done for industrial or commercial purposes; (2) Protection must not preclude licensees or any person who preceding to the filing/priority date of the patent application was in good faith making the product/using the process in Sri Lanka, which is the subject of patent or has in good faith made serious preparations in Sri Lanka towards making same; (3) Protection does not extend to the presence or use of products on foreign vessels, aircraft, spacecraft or land vehicles that temporarily or accidentally enter the waters, airspace or territory of Sri Lanka; (4) Protection must not extend to acts in respect of articles that have been put in the market by the owner of the patent, or by a manufacture under licence (exhaustion or rights); (5) Protection is subject to the provisions on compulsory licensing.
Duration. A patent is valid for a period of 20 years from the date of application for its registration.
Infringement and remedies. Where a person to whom any recognized rights granted under this act proves to a satisfaction of the court that the person is threatening to infringe or has infringed his/her rights, or is performing acts that make it likely to infringe a right under this Act, the court may grant an injunction restraining such person from commencing or continuing such infringement or performing such acts, and may order damages and such other relief as the court deems just and equitable.
Offences. Any person who willfully infringes the rights of any registered owner, assignee or licensee of a patent must be guilty of an offence. Such person is liable on conviction after trial before a magistrate to a fine not exceeding 500,000 rupees (US$3,300) or to imprisonment for a term not exceeding six months, or to both fine and imprisonment. In the case of second or subsequent convictions, the fine or the terms of imprisonment, or both, may be doubled.
Sri Lanka is a contracting state to the Paris Convention, Patent Co-operation Treaty, and the TRIPS Agreement.
JULIUS & CREASY
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