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 1995 75 114 189 64 95 159 1996 50 114 164 98 107 205 1997 81 193 274 65 96 161 1998 54 158 212 44 97 141 1999 119 248 367 78 101 179 2000 71 250 321 59 169 228 2001 120 236 356 71 104 175 2002 123 202 325 59 54 113 2003 95 189 284 63 52 115 2004 120 195 315 103 85 188 2005 149 211 360 64 116 180 2006 153 270 423 68 69 137 2007 151 279 430 54 37 91 2008 450 259 2009 403 366 2010 460 504 2011 429 272 2012 539 126 1
Table 2A 2006 2007 2008 2009 Received Grant of 423 137 430 91 450 259 403 366 patents Renewal 418 307 454 155 379 463 379 512 Copies of 52 52 29 29 13 18 108 108 documents Assignments 12 11 11 11 33 33 10 21 Search 171 159 111 54 203 138 203 254 report on prior art Public 157-52 52 36 36 66 66 searches Amendment 2 34 7 22 32 38 39 39 s Acknowledg 403 133-133 - 50-40 ements Investigation - 403-133 33 33 42 42 on documents Classificatio - 159-54 - 113-150 ns Gazette Notifications - - - 200-68 - 151 2
Table 2B 2010 2011 2012 Grants of Patents 460 504 429 272 539 126 Renewals 354 582 428 398 540 502 Copies of 69 69 72 72 52 52 Documents Assignments/Record 16 21 25 18 24 24 changes Search Report on 225 206 194 153 [No 112 Prior Art statistics are available this year] Public Searches 64 164 57 57 [No 52 statistics are available this year] Amendments 29 29 48 48 48 18 Acknowledgements - 12-17 - 137 Formality Search - 496-1275 - 315 Classifications - 116-81 - 49 Gazette Notifications - 203-92 - 46 Miscellaneous 36 52 52 65 [No statistics are available 1000 Data Entry & Validation this year] - 2862-1428 - 628 3
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 2007. 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 2013. 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 2012. 2013 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
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 email 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 2013. 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 email, 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.14063 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 2013. 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: 2012 1/IP/2012 to 42/IP/2012 2013 1/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
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