Non Resident Total Resident

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1 APAA PATENTS COMMITTEE Penang, 2014 SRI LANKA REPORT- Statistics and Some Cases By John Wilson. Table 1 Patent Statistics Year Applications Grants Resident Non Resident Total Resident Non Resident Total up to (30/09/2014)

2 Table 2A Applica- Number Applica- Number Applica- Number Applications tions completeteted tions comple- tions comple- Number completed Grant of Patents Renewal Copies of Documents Assignment s Search Report on Prior Art Public Searches Amendmen ts Acknowled gements Investigatio n on Documents Classificatio ns Gazette Notification s Miscellaneo us Data Entry & Validation

3 Table 2B Applications Number Applications Number Applications completed completed Number completed Grants of Patents Renewals Copies Documents of Assignments/Record changes Search Report on Prior Art Public Searches Amendments Acknowledgements Formality Search Classifications Gazette Notifications Miscellaneous Data Entry & Validation

4 Statistics Table 1 above shows the breakdown between the number of patents applied for/registered by residents and non-residents up to and including the first nine months of the year Tables 2A and 2B above provide a summary of total numbers of patent applications and grants and other connected activities for the years 2007 through A few points to note arising out of these statistics are that while the percentage of applications made for the grant of patents in the year 2013 has dropped by around 4% when compared to the year 2012, the percentage of completed grants of patent has increased by over 80%. A similar drop of around 4% in terms of renewal applications in the year 2013 when compared to the year 2012 can be observed; however there is no increase in terms of renewals completed; in fact renewals completed have gone down by 15% in the year 2013 when compared to the year There is also a surge of 13% in terms of gazette notifications published when comparing the figures for the years 2012 and 2013, as well as a significant increase of over 340% in relation to acknowledgments issued. The overall picture is that there has been an appreciable decrease in processing times at the patent section of the National Intellectual Property Office when compared to previous years. 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 an inventive step. The case was settled. This is an unreported case. 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 4

5 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. 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. This is an unreported case. 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, 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. In Michael Laurents Cyrille Caderamanpulle vs Quikpak (Pvt) Limited [HC (Civil) 38/2000(03)], the Plaintiff sued the Defendant alleging infringement of its patent in respect of a Rigid T Sack (Valve Type) and sought inter alia a permanent injunction restraining the Defendant exploiting the patent registered to him. The Defendant s main contention, based on Section 68(3) of the Act, was that the Plaintiff had not disclosed or divulged the particular method of construction of his invention and had kept it as a trade secret, The injunction was granted on the grounds inter alia that the Claimant is not bound to disclose every minute detail of his invention. This is an unreported case. Subsequently in Michael Laurents Cyrille Caderamanpulle vs. Mohamad Haniffa Mohamad Ajmal, Quikpak (Pvt) Limited [HC (Civil) 33/2004(03)] the Plaintiff sought inter alia a declaration that the Defendant s patent in respect of an Recyclable Eco Friendly Tea Sack is null and void. The interim injunction sought was refused on the grounds that the Court lacked the necessary evidence to make the right decision and as such it is the duty of the Court to make an order that will maintain the status quo. This is an unreported case. In TVS Motor Company Limited Vs Bajaj Auto Limited and DGIP [HC (Civil) 22/2012] the Plaintiff initiated proceedings seeking a declaration that the Defendant s patent in respect to an Improved Internal Combustion Engine 5

6 Working on Four Stroke Principle is null and void on the basis that it is not novel. This is a pending case. An was circulated to the members of the Sri Lanka group on 14 th October 2014 requesting them to furnish details of any patent related cases being handled by them. In response one member firm informed us 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. 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 pending case records so we are unable to update this report at present. We have also been informed that for the years 2013 and 2014 the following IP cases were pending: /IP/2013 to 25/IP/ /IP/2014 to 30/IP/2014 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. 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, Patent and Trademark Attorneys. 6