Patent Law in Sri Lanka
The Intellectual Property Act No. 36 of 2003.
As Sri Lanka is a member of the Paris Convention for the protection of industrial property, Sri Lankans can obtain patents for their inventions in any member country of the Paris Convention under the national law of the relevant country.
Sri Lanka is member of the Patent Cooperation Treaty (PCT) administered by World Intellectual Property Organization (WIPO) in Geneva.
Patent Registration Procedure in Sri Lanka
1. Patent Filing
2. Preliminary Exam
3. Patent Publication: 18 months from the priority date
4. Formal Examination Request: Before 36 months from the filing date.
* Must be requested after 60 days from the patent publication date
5. 90 days to respond to the office action from the formal examination
6. Acceptance or rejection
7. Payment of the Final Taxes and Title
- Detailed below are indicative timelines regarding Patent registration in Sri Lanka.
* From the patent filing date, the patents are examined in the order they were received. The approval or rejection of a patent application can take over 2 years.
* Then, if the patent application is found to be allowable, a notice of allowance will be sent to the applicant and a fee for issuing the patent is due within three (3) months from the date of the notice.
* The deadline for filing a patent application in Sri Lanka is within 30 months from the first priority date.
Documents and information require for patent in Sri Lanka:
1. Details of the Applicant [name, address, residence or principal place of business, telephone number, telegraphic address, teleprinter address (if any)]
2. Basis of the Applicant’s right to the patent must be disclosed where the applicant is not the inventor ie. whether the Applicant is the legal representative/assignee of the inventor, or the Applicant is the owner of the invention which was made while the inventor was in the employment of the applicant or by the inventor in the performance of the contract for the execution of work etc
3. Details of the Preliminary Examination Report issued by World Intellectual Property Organization (WIPO)
4. The name of the National, Regional or International Organization issuing the International Search Report
5. At the filing stage the following additional documents are required:
* A POA duly signed by the applicant - Seal or Stamped required if is a company.
* Copy of the International Application Published under PCT Publication (only for PCT applications);
* International Search Report
* Specifications – containing the description/claims/drawings
* Priority document - issued by the Patent Office of the Country where the Original application was filed.
Additional Notes: At the initial stage of filing it is sufficient to submit a copy of the Power of Attorney (POA) and a copy of the PCT application with the local application form. The other documents can be forwarded subsequently (within a reasonable time). The POA and Priority documents must be provided within three (3) months from the date of filing.
It may take approximately 3-4 years to register a Patent in Sri Lanka.
A Patent shall expire in 20 years from the date of filing the application. If it is a priority application, then 20 years is calculated from the priority date.
The first annual fees for the Sri Lankan patent will fall due within two years after the certificate has been issued. From the second year of registering a patent in Sri Lanka, it has to be renewed every year, up to 20 years. All subsequent annual fees should be paid annually before the anniversary of the filing date. Late payment is possible within six months after alongside payment of the corresponding surcharge. Annual maintenance fees may be paid in advance.
* Kindly, note that we make a careful reminders of the due date as we keep you informed for paying the annuity fee on time with our modern IP software platform.
There is a one-year novelty grace period in Sri Lanka for the disclosures made by the applicant or his predecessor in title. A six-month novelty grace period is applied when the disclosure was made in abuse of the rights of the applicant or his legal predecessor in title.
The language of the Sri Lankan patent application is English. The application may be filed in any other foreign language; however the English translation should be submitted within three months from the date of filing the patent application.
Remarks about the patent registration process in Sri Lanka
* An application can be filed at the National Intellectual Property Office. A document should be submitted with the application form describing the invention clearly and completely along with the claims and the prescribed fee. A search report prepared by an International Searching Authority (ISA) or alternatively, a request can be made to the IP Office to refer the application to a local patent examiner for a search report.
* The IP Office will examine the application and the documents as to the requirements of the IP Act.
* If formal requirements are fulfilled and the application is filed along with relevant documents, the examination will be carried out to ascertain novelty.
* If the patent application fulfills the criteria for patentability, the patent will be granted.
* The accepted applications will be published in the government gazette and patents will be granted, if there are no oppositions against the granting of the Patent.
Not patentable in Sri Lanka
(i) discoveries, scientific theories and mathematical methods;
(ii) plants, animals micro organisms other than transgenic micro organisms and an essentially biological process for the production of plants and animals other than non biological and micro-biological processes;
(iii) schemes, rules or methods for doing business, performing purely mental acts or playing games
(iv) methods for treatment of human or animal body by surgery or therapy and diagnostic methods practiced on human or animal body
(v) inventions which are necessary to protect public order, morality including human animal or plant life, health, or to avoid serious prejudice to environment.
Trademark Law in Sri Lanka
The legal basis of intellectual property protection in Sri Lanka is the Intellectual Property Act No. 36 of 2003.
Sri Lanka is not a member of the Madrid Agreement or Protocol.
Trademark protection is obtained by registration. Protection is afforded to well known marks in Sri Lanka under certain conditions.
Nice classification, 9th edition. Multiple-class applications are not possible. A POA per class per mark.
Trademark Registration Procedure in Sri Lanka
The application is filed at the National Intellectual Property Office of Sri Lanka (NIPO).
The application process includes a formal examination, an examination of distinctiveness and a search for prior similar marks
Before registration, the trademark is published in a Government Gazette.
National Opposition Period
The opposition period is 3 months from the date of publication of the application in the Government Gazette.
The processing time from first filing to registration is approx. from 3-4 years (dependent on the class).
A trademark registration is valid for 10 years from the filing date of the application. The registration is renewable for periods of 10 years.