Intellectual Property Law in Sri Lanka

Legal systems are not equal or always similar in everycountry/territory in the world. However, all legal systems provide protectionfor any movable or immovable property legally acquired and owned by individualsand legal persons in that particular country/territory. On the other hand,“Property” in its general meaning is tangible.

In contrast to real property, Intellectual Property is NOTtangible because it is not a product of human dexterity but of human intellect.Therefore it is said that“ it is a fruit of human intellect”. In the process ofthe development of the world as it stands today, the human mind: the intellectplayed the major role which nobody can deny. Therefore every country has givena prominent place to this special branch of Law for the sake of economicdevelopment.

Although it is a fact that the power of thinking or the Power of mind cannot bestolen by a powerful third party, it is equally true that “ IntellectualProperty Rights “ are being infringed all over the globe. Intellectual PropertyLaw is the branch of Law that provides protection for this valuable result ofhuman endeavor. Intellectual Property Act No.36 of 2003 is the frame workwithin which the Intellectual Property Rights are currently protected withinthe Island of SRI LANKA which is a member state of World Intellectual Propertyorganization (WIPO) and a party for the International Treaties/Agreements suchas (PCT)Patent Co-operation Treaty, TRIPS Agreement and Berneconvention.

Intellectual Property is classified under several Headings in the Act, ie: Copyright and related rights, Industrial Designs, Patents, Marks & Trade Marks,Collective marks, Certification Marks, Trade Names and Layout Designs ofIntegrated Circuits to be given the protection of Law.

The National Intellectual Property Office of Sri Lanka is the ONLY Governmentbody established for the full control of IP related matters includingRegistration and Administration of Industrial Designs, Patents, Marks and anyother matter as provided by the Act (s. 4).

Any non-resident individual or legal entity incorporated outside Sri Lanka may register their IP rights in Sri Lankathrough an Attorney/Agent Registered in the National Intellectual PropertyOffice because the Office needs a local Postal Address for correspondence.

Copyright : includes all creative and artistic works such asbooks, movies, music, paintings, photographs, folk lore, sound recordings andcomputer programs etc, etc which need NO registration under the Act butprotected automatically by operation of Law. Section 13(1) of the Act provides,“economic and moral rights shall be protected during the life time of theauthor and for a further period of 70 years of his death” where as Protectionfor joint authorship, collective work, anonymously published work and work ofapplied art are indicated in Sections. 13(2) (3) (4) &(5) respectively.

Industrial Design : Legal protection for an Industrial design expires oncompletion of FIVE years since its application for registration and can berenewed TWO consecutive periods in accordance with the Sri Lankan Law. Howeverthe renewal fee should be paid within SIX months before the expiration of theregistration but there is a grace period of six months to pay such fees evenafter the expiration of earlier registration and if so, a surcharge may have tobe paid.

If any applicant wishes to avail priority for an Industrial design for which hehad filed an application in a convention country within a six months from thedate he files application in Sri Lanka can make a request for priority byfurnishing a copy of the earlier application duly certified by the appropriateauthority where the earlier application is filed.

Patents: Patents are granted for inventions with exclusive rights for a periodof 20 years in accordance with the Laws provided by the Intellectual PropertyAct mentioned above. Invention according to the Act is, “an idea of an inventorwhich permits in practice the solution to a specific problem in the field oftechnology”. An invention is patentable,” if it is new, involves an inventivestep and is industrially applicable” but at the same time the Act does not makeprovisions for every invention to be patentable.

The general requisites for a patent application are : a request for grant of apatent with the name and address of the applicant, Description of theinvention, Claims, Drawings (if any), abstract , details of the previousforeign application if any along with the search report( if priority isclaimed) etc, and the Power of attorney in favor of the Attorney /Agent whorepresent the applicant in Sri Lanka.

Though the validity of a patent is 20 years after 02 years of the applicationand if the patent is granted the annual fees (annuities)should be paid to thePatent Office in order to keep the patent valid. Grace period is only 06 monthswithin which one can pay annuities with a surcharge.

Trade Marks : Mark generally means “ a visible sign which is capable ofdistinguishing the goods or services of different enterprises”. A mark mayconsists of a word, a symbol, a device, letters, numerals, a name, surname orgeographical name, a combination or arrangement of colors and shapes of goodsor containers etc. The visible sign must always be capable of distinguishingthe goods or services of different enterprises.

In Sri Lanka trademarks are registered for 10 yearperiods, which run from their date of application. Unlike the otherintellectual property Trade marks Registration can be renewed for any number oftimes and if the prescribed fee is paid in time ,could remain in force for anindefinite period of time.

Once you register your mark until the lapse of 10 year duration the mark ownerwill have NO expenses regarding the maintenance of the mark and every 10 yearhe has to renew the registration by the payment of the renewal fee through hisAttorney/Agent.

Individuals living outside Sri Lanka and legal entities incorporated in foreignsoil and engage in trade within the country, need to find a suitableAttorney/Agent within Sri Lanka in order to represent them in all intellectualproperty matters because the IP Office requires an address in the Sri Lankansoil for correspondence.

ABOUT THE AUTHOR: Dissanayake M Sunil (B A)
Attorney at Law , NP & Intellectual Property Attorney/Agent registered inthe IP Office ,Sri Lanka.Dissanayake M Sunil's legal practice focuses on all areas of Intellectualproperty matters such as registration, renewal, maintenance (includinglitigation against infringements) on rights of Patents,Trade Marks &Industrial designs and all other assistance required by clients at the NationalIntellectual Property office of Sri Lanka.

Copyright Dissanayake M Sunil