IP Practice In Sri Lanka

Patent in Sri Lanka

The Patent rights are protected and governed by Code of Intellectual Property Act No.52 of 1979, in Sri-Lanka. The State grants inventor his Patent rights for a span of 20years,in which no one else is allowed to make, use and sell the qualified invention except when others are licensed to do so.

Sri Lanka is a member of the Paris Convention for the protection of industrial property, therefore,  Sri Lankans can obtain patents for their inventions in any member country of the Paris Convention under the national law of the relevant country.  This Convention provides for the Applicants to claim priority.

All Sri Lankan nationals or residents can apply under the Patent Cooperation Treaty (PCT) administered by World Intellectual Property Organization (WIPO) in Geneva.

Counties which the applicant intends to file national application later must be designated in the PCT application. PCT application has the same effect as a national application filed in the designated countries.

Patent Application
  1. An application for the grant of a patent shall be made to the Director-General in the prescribed form and shall contain—

  • a request for the grant of the patent;

  • a description of the patent;

  • a claim or claims;

  • a drawing or drawings, where required;

  • an abstract;

  • date and number of any application for a patent filed by the applicant abroad (hereinafter referred to as the “foreign application”), if any, relating to the same, or essentially the same invention as that claimed in the present application ;

  • a declaration that the applicant or his 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.

  1. Every person that is giving an application has to furnish a report of a search in the time that is prescribed by the authorities. The applicant can also request the Director-General to refer his application a examiner who shall do the require examination with due regard to the description and the drawings, if any, and furnish a report to the Director-General within the prescribed period. for the purposes of the search the examiner shall make reference to every documentation on prior art available to him.

Inventions Which Are Not Patentable

Following are not patentable:

(a) discoveries, scientific theories and mathematical methods;

(b) plants, animals and other micro organism other than transgenic micro organism and an essentially biological process for the production of plants and animals other than non-biological and microbiological processes : Provided however, that a patent granted in respect of micro-organisms shall be subject to the provisions of this Act;

(c) schemes, rules, or methods for doing business, performing purely mental acts or playing games;

(d) methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body : Provided however, any product used in any such method shall be patentable;

(e) an invention which is useful in the utilization of special nuclear material or atomic energy in an atomic weapon ; Definition of invention. 50 Intellectual Property Act, No. 36 of 2003;

(f) 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.

Right To A Patent

(1)  The right to a patent shall belong to the inventor, keeping in mind that no prior patent’s rights are being used while making an application for this patent. If yes, then proper permissions have to be taken according to the prescribed provisions of the Act.

(2) Where two or more persons have jointly made an invention, the right to a patent shall belong to them jointly.

(3) If and to the extent to which two or more persons have made the same invention independently of each other, the person whose application has the earliest filling date or, if priority is claimed, the earliest validly claimed priority date, shall have the right to the patent, so long as that application is not withdrawn, abandoned or rejected.

Grant Of Patent

On examining the Patent application, when Director General is convinced that the Patent fulfils all the requirements as specified in the statute,  then the applicant is  issued a certificate for grant of the patent together with a copy of the patent documents including the search report. The grant of Patent, shall then be published in published in the Gazette.

Term Of Patent

Patent shall expire twenty years after the filing date of application for its registration.

Nullity Of Patent

Section 99 provides that the Court may on the application of any person showing a legitimate interest, or of any Competent Authority including the Director-General, to which the owner of the patent and every assignee, licensee or sub-licensee on record shall be made party, declare the patent null and void on any one or more of the following grounds :—

a) subject not being an invention and do not satisfy with the requirement as per the Patent Act of Sri Lanka
b) that the description or the claims of the subject, fails to satisfy the requirements of the Statute or
c) that any drawings required for the understanding of the claimed invention have not been furnished ;
d) that the right to the patent belongs to a person other than the person to whom the patent was granted.

 
Trademark in Sri Lanka

Sri Lanka identifies and protects registered and unregistered trademark or service mark in accordance to Intellectual Property act of No 03. Of 2003 and provides the few advantages to the proprietors of registered Trademarks such as it provides the proof of ownership of the mark and also enables the proprietor to take action against infringement.

Application For Registration

1. An application for registration of a mark shall be made to the Director-General in the prescribed form and shall contain —
(a) A request for the registration of the mark

(b) The name, address of the applicant and, if he is resident outside Sri Lanka, a postal address for service in Sri Lanka

(c) Five copies of a representation of the mark

(d) A clear and complete list of the particular goods or services in respect of which registration of the mark is requested, with an indication of the corresponding class or classes in the international classification, as may be prescribed.

2. The Director-General shall first notify the applicant of any defect in the application and shall afford him an opportunity to rectify such defect within three months from the date of receipt of such notification. The date on which the applicant rectifies such defect shall be deemed to be the date of receipt of the application for registration

3. Where the Director-General refuses to register a mark, he shall, if so requested by the applicant, state in writing the grounds of his decision.

Opposition

1. A person can give a notice of opposition accompanied by evidence to substantiate the ground of opposition, within a period of three months from the date of publication of the application. Such opposition can be given on cases, where, such person considers that the mark is inadmissible.

2. Where, within the specified period notice of grounds of opposition is received by the Director-General, he shall serve a copy of such grounds of opposition on the applicant and shall request him to present his observations on those grounds in writing accompanied by evidence to support his application within a period of three months.

3. On receipt of the observations of the applicant, the Director-General shall after hearing the parties, if he considers such hearing necessary, decide, as expeditiously as possible, whether such mark should be registered or not. If the Director-General decides that the mark can be registered, then if —

(a) No appeal is preferred against his decision, upon the expiry of the period within which an appeal may be preferred against his decision

(b) An appeal is preferred against his decision, upon the determination of such appeal.

The Director-General shall accordingly register such mark.

Registration Of Marks

1. The Director General shall issue certificate of registration on registration of the mark.

2. The Director-General shall keep and maintain a register called the “Register of Marks” wherein shall be recorded in the order of their registration, all registered marks and such other matters relating to marks as are authorized or directed by this Part to be so recorded or may from time to time be prescribed.

3. The Director-General shall cause to be published in the Gazette, in the prescribed form, all registered marks in the order of their registration, including in respect of each mark so published reference to such particulars as may be prescribed.

Term Of Trademark

Registration of a mark shall expire ten years after the date of registration of such mark.

Renewal

1. Registration of a mark may be renewed for consecutive periods of ten years each on payment of the prescribed fee. Such renewals of registration shall be.

2. The Director-General shall record in the register and cause to be published in the Gazette in the prescribed form all renewals of registration specifying any removal from the lists of goods or services.

Revocation or Nullity

The Court may on the application of any person showing a legitimate interest, or of any competent Authority including the Director-General , to which the registered owner of the mark and every assignee, licensee or sub-licensee on record shall be made party, declare the registration of the mark null and void if its registration is precluded under the provisions of sections 103 and 104 :

Provided, however, that grounds of nullity which does not exist on the date of the application to Court, shall not be taken into account.

Trademark Classes

Sri Lanka follows the International Classification of Goods and Services. There are 34 classes of Goods and 11 classes of services. in total 1-45 classes are present.

Trademark Search

Trademark searches are divided into two categories:
1. Device search: Device Search is to determine the availability of a device mark or logo against visually similar marks in virtually any country in the world.
2. Word Search: Similarly word mark is search can also be conducted under the respective classes specified above.