APAA PATENTS COMMITTEE Hanoi, 2013 SRI LANKA REPORT- Statistics and Some Cases By John Wilson. Year Applications Grants

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1 APAA PATENTS COMMITTEE Hanoi, 2013 SRI LANKA REPORT- Statistics and Some Cases By John Wilson. Table 1 Patent Statistics Year Grants Resident Non- Total Resident Non Total Resident Resident

2 Table 2A Received Grant of patents Renewal Copies of documents Assignments Search report on prior art Public searches Amendment s Acknowledg ements Investigation on documents Classificatio ns Gazette Notifications

3 Table 2B Grants of Patents Renewals Copies of Documents Assignments/Record changes Search Report on [No 112 Prior Art statistics are available this year] Public Searches [No 52 statistics are available this year] Amendments Acknowledgements Formality Search Classifications Gazette Notifications Miscellaneous [No statistics are available 1000 Data Entry & Validation this year]

4 Statistics Table 1 above shows the breakdown inter alia between the numbers of patents applied for/registered by residents and non-residents up to and including A breakdown for 2008, 2009, 2010, 2011 and 2012 between applications by residents/non residents is not available but the total figures for the years 2008, 2009, 2010, 2011 and 2012 have been added in to this Table. Figures are not yet available for Tables 2A and 2B above provide a summary of total numbers of patent applications and grants and other connected activities for the years 2006, 2007, 2008, 2009, 2010, 2011 and figures are not available. A key point to note arising out of these statistics is that while the percentage of applications made for grant of patents in the year 2012 has increased by 12% compared to the year 2011, the percentage of grants to applications has dropped by 40%. This may result in longer time frames for the grant of patents from the date of application. Patents Legislative Developments There have been no recent changes to the law or regulations. Case Law There have been no recent reported patent cases in the Sri Lanka Law Reports. Several actions are pending before the Commercial High Court and there are also a few cases in appeal before the Supreme Court. Details will be made available in next year s report if final judgments have been delivered at that time and copies can be obtained. In one case before the High Court of the Western Province the questions of inventive step and obviousness were raised as a ground for challenging the validity of Patents. Notably in Lignocell Ltd vs. Cocos Lanka Exports (Pvt) Ltd [HCC 30/2001(3)] the interim injunction sought was refused on the ground that the patent of the Plaintiff in respect of a Squeezer Machine prima facie lacks inventive step. This is an unreported case. The case record was not available when we tried to check the current position. In K.H.Amarasiri vs. Clipsal Lanka (Private) Ltd [HCC 31/2003(3)], the Plaintiff in a patent involving meter boxes relied on the commercial success of the invention as a measure of evaluating the assertion of the inventive step. Even though the case was eventually settled, the Order delivered by K. T. Chitrasiri J. on the objections raised to the issues framed by the defendant states that it is necessary for the Plaintiff to prove the ingredients mentioned in Sections 63 to 65 in the Act in establishing that he has a valid patent. Sections 63 to 65 of the Intellectual Property Act discuss the aspects of patentable inventions, novelty and inventive step respectively. This is an unreported case. 4

5 In Nikini Automation Services (Pvt.) Ltd. vs. Jinasena Engineering Technologies (Pvt.) Ltd. [H.C. Civil 35/2000] the Plaintiff sued the Defendant alleging infringement of its patent in respect of a Pneumatic Tea Roller. The case was settled. Subsequently in Nikini Automation Services (Pvt.) Ltd. Vs. Frank Warnakulasooriya [H.C.Civil 33/2001] the Plaintiff sought a declaration that the Defendant s patent in respect of an Isothermal Tea Roller is null and void. The said patent which is in respect of an Isothermal Tea Roller, having been assigned to Jinasena Engineering Technologies (Pvt.) Ltd., the said company was added as a party defendant to the action ( the added Defendant ); and it sought to have the Plaintiff s action dismissed in as much as the Defendant who was the registered owner of the patent assigned his rights in the same to the added Defendant by way of Deed of Assignment and that the Plaintiff is not entitled to a declaration of nullity as prayed for, in that, inter alia, the registered patent assigned to the added Defendant does not violate the purported patent of the Plaintiff. The case has been settled. An was circulated to the members of the Sri Lankan registered group on 26 th September 2013 requesting them to furnish details of any patent related cases being handled by them before the 14 th of October In response to the said request Julius and Creasy has furnished us with details of case no. HC (Civil) 22/2012/(IP) TVS Motor Company Limited Vs Bajaj Auto Limited and DGIP. We have also been informed by Nithi Murugesu & Associates, by way of a response to our said , that they have not been involved in any patent related litigation for the period under review. Any information in regard to Court cases involving patents by the other members after the date of presenting this report to the Sri Lanka group would be included in a separate addendum to the report or mentioned in next year s report depending on the date on which the same is. In TVS Motor Company Limited Vs Bajaj Auto Limited and DGIP an action was instituted to nullify Patent No on the basis that it is not novel. Interrogatories filed by the Defendant have been answered by the Plaintiffs and the matter has been fixed for inquiry on the 26 th of November We have been unable to obtain certified copies of two patent cases, the case numbers of which we were given last year by another member of the Sri Lanka recognized Group: HC (Civil) 08/11 IP and H.C. (Civil) 24/10 IP. Last year we reported that this report would be updated once complete sets of certified copies of the case records were made available to us by the Court Registry. However due to changes in the practice of the Court Registry, we have been informed that it is no longer possible for a person/lawyer other than a party/lawyer to a case to obtain certified copies of case records so we are unable to update this report at present. We have also been informed that for the years 2012 and 2013 the following IP cases were pending: /IP/2012 to 42/IP/ /IP/2013 to 25/IP/2013 Apart from the foregoing case numbers, the Registry of the Commercial High Court is not prepared to provide details of these cases so it is not possible to ascertain whether or not these cases were patent related. 5

6 Please note that the above mentioned cases are the cases which we have been able to ascertain on the basis of inquiries made and cases handled by this firm. There may of course be other unreported cases of which we are not aware. John Wilson Managing Proprietor JOHN WILSON PARTNERS Attorneys-at-Law & Notaries Public Patent and Trademark Attorneys. 6