Intellectual property rights are governed by Intellectual Property Act No 36 of 2003, as amended (hereinafter referred to as the “IP Act”). The IP Act defines an “invention” as an idea of an inventor that in practice solves a specific problem in the field of technology. Inventions that meet the patent eligibility criteria may be patentable.

The law relating to patents is provided in Part IV of the IP Act. The primary source of patent law is the IP Act; case law is secondary and may be used by courts for interpretation purposes.

Patentable Inventions

According to Section 63 of the IP Act, an invention is patentable if it is novel/new, involves inventive step and is industrially applicable. Protection can be granted to a product or a process, as well to as any improvements to an existing product or process.

Section 71 provides that application for the registration of a patent must be made in a prescribed form and include the following:

• a request for the grant of patent;
• a description of the patent;
• claims;
• drawings, if required;
• an abstract;
• details of the foreign patent application, if relevant;
• a search report prepared by the International Searching Authority (ISA), if applicable; and
• a declaration that the applicant has not previously obtained a patent abroad for the same invention.

Generally, the patent registration procedure takes about two years. Application for the registration of a patent may be filed by a local agent, or directly by the inventor if he/she is a Sri Lankan national. However, if the inventor is a foreign national, he/she will require representation by an agent resident in Sri Lanka.

In terms of the duration of protection, the patent is protected for 20 years from the date of filing the patent application at the IP Office. However, annual fees will be payable to maintain the protection.

According to Section 84 of the IP Act, the registered owner of the patent has the following exclusive rights and could restrain others from performing any such acts without his or her consent:

• to exploit the invention (making, importing, selling, exporting or using the product or process, and preventing anyone else from using that process);
• to assign or transmit the patent to another party; and
• to grant licence contracts to another party.

However, the owner of the patent has the obligation to pay annual fees to maintain the patent in force for 20 years. The owner of the patent also has the right to enforce:

• injunctions against the infringer;
• damages for loss from the infringement;
• seizure of infringing items; and
• fines and imprisonment under criminal proceedings.

Records and information on the patent can be obtained from the National Intellectual Property Office (NIPO) of Sri Lanka, which handles the patent registry. In addition, patent applications and granted patents are published in the Government Gazette. However, with respect to pharmaceuticals, there is no statutory linkage system that connects drug marketing approval with the patent lists in Sri Lanka at present.

Under the IP Act, no further protection is granted to a patent once the 20-year period has expired. Hence, the invention will become public domain such that anyone is free to make, use, sell or import it. Furthermore, if the renewal fees are not paid as prescribed, the patent protection may expire before the full 20-year term.

According to Section 79 (2) of the IP Act, the Director General shall grant the patent where the applicant fulfils the requirements under Section 78(1), upon examination of the patent application to the satisfaction of the Director General.

Under the patent registration process, a third party may challenge a patent application when it is published in the Government Gazette. Any third-party having interest in the matter may file an action by applying to the Commercial High Court of Sri Lanka to challenge the grant of the patent.

If the application for the grant of patent protection is refused by the Director General of the IP Office, the applicant may file an appeal in the Commercial High Court of Sri Lanka within six months from the date of the refusal decision. Said action must be filed by way of a petition for appeal, marking the Director General as the respondent. Further, an Appeal may be filed in the Supreme Court of Sri Lanka against the order of the Commercial High Court.

If the renewal fees are not paid as prescribed, patent protection may expire before the full 20-year term. However, a grace period of six months is available after the date of expiry, upon payment of the prescribed surcharges.

Under the IP Act, no provision is available in respect of amendment of granted patent rights once the patent is granted. However, Section 88 allows the assignment or transmission of the patent to be recorded.

Under Section 170 of the IP Act, the owner of the patent may file a civil court action in the Commercial High Court for infringement. Further, Section 181 states that a criminal action is also available against the infringer in the magistrate's courts.

Under the IP Act, third parties have the following remedies to remove the effects of an existing patent:

• court action for nullity/cancellation (Section 99);
• opposition action during the three-month period after the notice of intention to grant is published in the Government Gazette;
• invalidity as a defence/counterclaim in an infringement action (Section 170 (2); and
• declaration of non-infringement (Section 172).

In Sri Lanka, the Commercial High Court has exclusive jurisdiction over intellectual property civil actions. Appeals against the decisions of the Commercial High Court will be heard in the Supreme Court, which is the final appellate court.

In case of criminal action, the case will be heard in the magistrate's court, and the first appeal will be to the High Court – then to the Court of Appeal and finally to the Supreme Court.

There are no specialised organisations for the resolution of intellectual property (patent) disputes. However, if there are agreements such as a licence agreement or non-disclosure agreements (NDAs) that specifically include ADR clauses, arbitration is possible.

There are no statutory prerequisites for filing a lawsuit. It is up to the parties to decide whether to send a letter of demand prior to filing a lawsuit.

Any Sri Lankan citizen can represent himself/herself in person unless it is specifically provided by law that legal representation is required. However, in practice lawyers are retained.

Section 170 (1) of the IP Act clearly states that where the owner of any intellectual property right proves to the satisfaction of the court that a person is threatening to infringe, or has infringed, any of his or her rights – or is performing an act that makes it likely that infringement will occur – the court may grant an injunction restraining such person from commencing or continuing such infringement or performing such act.

Section 172 (4) of IP Act expressly provides that the Sri Lanka Judicature Act and the Civil Procedure Code (CPC), as amended, empower courts to grant enjoining orders/interim injunctions/injunctions.

Interim injunctions are sought in respect of infringement/unfair competition matters until the final determination of the action. Ex parte orders can be obtained by way of enjoining orders, which are valid for 14 days if the court is satisfied after considering the facts and circumstances of the matter, and to preserve the status quo. Once such order is made, the defendant must be notified, and after hearing both parties an inquiry court decides whether to issue an interim injunction until the final determination of the action.

In Sri Lanka, courts are empowered to order a plaintiff to deposit security when granting interim injunctions or enjoining orders to protect the defendant from potential loss or damage.

The IP Act is silent on the limitation periods in civil litigation; therefore, the provisions of the Prescription Ordinance are applicable. Under Section 9 of the Prescription Ordinance, where damages are claimed as remedy, such action must be filed within two years from the date that cause of action arose. Also, according to Section 10, if not specifically provided for, the action must be filed within three years from the date that cause of action arose. In instances where there is a delay in filing a law suit, the court will deny exparte orders due to laches.

In Sri Lanka, the delivery of interrogatories, notice to admit the genuineness of documents and notice to produce documents for inspection referred to in the pleadings are governed by the CPC.

Recent amendments, including the Civil Procedure Code (Amendment) Act, No 29 of 2023, have updated the timelines and procedures for document handling to streamline pre-trial stages. Interrogatories are common in civil actions, and under Section 104 of the CPC, any party may obtain an order to produce documents for inspection that have been referred to in the other party’s pleadings. Further, an application can be made to the court 15 days prior to the pre-trial date for the discovery of documents.

The standard of initial pleadings is governed by the CPC. Section 40 of the CPC sets out the requisites of a plaint, including a plain and concise statement of the circumstances constituting each cause of action and when and where it arose. The defendant’s answer to the plaint must be filed as prescribed under Section 75 (d) of the CPC, admitting or denying several averments of the plaint setting out in detail matters of fact and law and the circumstances of the case upon which the defendant is relying for his or her defence.

Section 75 (e) of the CPC provides that a defendant can make a claim in reconvention (counterclaim) in their answer. In such circumstances, the plaintiff has the right to file a replication.

Sri Lanka’s legal system permits representative or collective actions. In intellectual property litigation, such action could be in respect of collective marks or collection societies, or arise under the provisions governing unfair competition.

In Sri Lanka, while a patent grants the owner a monopoly for 20 years, this right is not absolute. The Intellectual Property Act, No 36 of 2003 (as amended) outlines several restrictions and statutory limitations on a patent owner’s ability to assert rights against others.

Section 86 of the IP Act provides for limitations to the protected rights of an owner of a patent:

• the protected rights only cover acts done for industrial or commercial purposes and not acts done for scientific research;
• the protected rights do not preclude a person having the rights derived from prior manufacture or use referred to in Section 87 of the Act, or a licensee, from exploiting the patented invention;
• the protected rights do not extend to the presence or use of products on foreign vessels, aircrafts, spacecrafts or land vehicles that accidentally enter the waters, airspace or territory of Sri Lanka;
• the protected rights do not extend to acts performed in respect of goods put on the market by the patent owner, or with his or her written consent (parallel imports);
• compulsory licences may be granted under the Act;
• as per Section 87 of the Act, individuals who were exploiting the invention, or had made serious preparations to do so in good faith in Sri Lanka before the patent application date, have the right to continue that use; and
• if annuities have not been paid, the patent lapses.

Generally, an infringement action is filed by the owner of the intellectual property right. However, if a licensee is allowed to file an action by way of an agreement, it is possible to name the rights owner as well as a party.

Unauthorised exploitation, including making, using, selling or importing a patented product or process, constitutes infringement. The law covers both direct and indirect (including wilful) infringement. As per Section 84 of the IP Act, a patent owner can prevent third parties from making, using, offering for sale, selling or importing the patented product. If the patent is for a process, the owner can prevent third parties from using that process, and from using, selling or importing products obtained directly through it (injunctive relief and damages).

As per Section 181 of the IP Act, any person who wilfully infringes the rights of any registered owner, assignee or licensee of a patent is guilty of an offence (punishable by a fine not exceeding 500,000LKR, imprisonment or both).

Where the subject matter of a patent is a process for obtaining a product, the burden of proof in a civil action to establish that the alleged infringing product was not obtained by that patented process is on the alleged infringer.

The scope and extent of protection are determined by the claims in the patent document. The description of the patent helps in interpreting the claims.

The following defences can be raised by a defendant in a patent infringement action:

• the patent lacks novelty and inventive step;
• the infringing product/process does not fall within the scope of the protected claims;
• the plaintiff has used the alleged product prior to the filing of the patent application;
• the product is a parallel import;
• a declaration for non-infringement of the patent has or may be obtained;
• the patent has lapsed due to non-renewal;
• the defendant is entitled to a compulsory licence; and
• laches.

Experts witnesses can be appointed by the parties or their legal representatives. Under the Civil Procedure Code (Amendment) Act, No 8 of 2017, the court has the power during pre-trial hearings to appoint an independent expert to inquire into and report on specific questions of fact. Section 45 of the Evidence Ordinance refers to expert evidence.

The claims are the most important part of a patent specification and must be clear, concise and supported by a description (Section 71 (4) of the IP Act).

Higher courts in Sri Lanka (the Supreme Court and Court of Appeal) consider third-party opinions (amicus brief) in respect of fundamental rights issues. The Constitution does not provide a statutory clause for this purpose.

Under Chapter 18 of the IP Act, a patent may be surrendered or nullified before its full 20-year term. Section 98 states that the patent owner may surrender the entire patent, or a specific claim thereof, by submitting a signed declaration to the NIPO. The NIPO will then record the declaration and publish it in the Government Gazette. Such surrender will be effective from the date of submission of the declaration.

Section 99 of the IP Act states that any person showing a legitimate interest – or any competent authority, including the Director General of IP, may file a court action to nullify the patent if:

• the claim is not patentable under the Act;
• the claim is excluded from patent protection;
• the necessary drawings or disclosures are missing; or
• the person named as the patent owner is not entitled to claim ownership.

Once the court declares the patent null and void, the NIPO will record the same, and such declaration will be published in the Government Gazette

Partial revocation is possible if the patent owner surrenders a part of their claims in the patent by filing a declaration with the NIPO. Partial cancellation is also possible in a nullity action, where the court may declare some claims null and void; the rest of the patent can remain enforceable.

Amendments to pleadings are possible before the matter is fixed for pre-trial conference. The general law – ie, the provisions of the CPC – will apply (see Section 93).

Upon application before the day fixed for pre-trial conference of the action, and in the presence of or after reasonable notice is made to all the parties to the action, the court shall have full power to amend, at its discretion, all pleadings in the action by way of addition, alteration or omission.

On or after the day fixed for pre-trial conference of the action, and before the final judgment, no application for the amendment of any pleadings shall be allowed unless the court is satisfied, for reasons to be recorded by the court, that grave and irremediable injustice will be caused if such amendment is not permitted, on no other ground, and that the party so applying has not been guilty of laches.

In Sri Lanka, revocation/cancellation action and infringement cases are generally taken as two separate matters. However, these matters may be heard together if the defendant/infringer in an infringement case raises invalidity/nullity of the patent as a defence or counterclaim under Section 170 (2) of the IP Act. If the court is of the view that the patent is invalid and thus declares it null and void, the NIPO will record the same, and such declaration will be published in the Government Gazette.

There are no special procedural provisions for intellectual property rights proceedings. The Commercial High Court of Sri Lanka was established under the High Court of the Provinces (Special Provisions) Act No 10 of 1996 to provide a specialised and efficient forum for resolving high-value commercial disputes, including intellectual property disputes.

• Generally, it takes around 2–3 years for a matter to be concluded, but it can take longer.
• The plaintiff’s case is heard first and, once concluded, the defendant commences his or her case. There can be several hearing dates at the trial stage.
• The evidence-in-chief of witnesses is given by affidavit and then cross-examined by the opposing counsel.
• Cross-examination generally takes place in person, or virtually in case of a foreign witness if the opposing counsel agrees.

The remedies are pronounced at the time of the judgment, which include damages if claimed. If not, a separate action claiming damages will have to be filed.

Cases are determined by the judges of the Commercial High Court. At present, Commercial High Court No 1 handles intellectual property cases.

In a civil action during the pre-trial conference, the court may try to facilitate a settlement between the parties, ensuring that the matters not settled shall only be fixed for trial. Further:

• the judge shall, at the pre-trial conference, make every effort to persuade the parties to arrive at a settlement of the dispute, and where the parties agree to a settlement, it shall be recorded and signed by the parties – and an order shall be made in accordance with the terms thereof; and
• the judge, in an appropriate case, may direct the parties to appear in person – or, in the case of a party being a legal person, an authorised representative thereof must be present at the pre-trial conference in order to facilitate a settlement, adjustment, compromise or other agreement.

If the parties reach a settlement, its terms can be filed and recorded in court, and the decree will be recorded accordingly as per Section 408 of the CPC.

There have been instances where cases were stayed pending the orders of parallel or higher courts.

Under Section 170, the owner of the patent has the following remedies:

• injunctions;
• damages;
• delivery or destruction of infringing goods; and
• costs of the suit.

Enjoining orders/interim injunctions may be obtained while the infringement action is still ongoing, until the final determination of the action. The court will consider the likelihood of success in the case, potential damages if the injunction is not granted and potential hardship to the alleged infringer. Damages can be claimed on the actual losses, profit gained by the infringer or royalty that the infringer would have paid.

Delivery of the infringing goods to the patent owner or destruction of the same may also be ordered by the court, at the expense of the infringer.

If the defendant prevails in the infringement action, they will have the right to:

• avoid injunctions;
• recover legal costs at the discretion of the court;
• have seized goods returned;
• damages for malicious claims if the infringement action was brought without reasonable grounds; and
• apply to the courts for a declaration of non-infringement.

The remedies available for intellectual property violations in Sri Lanka are infringement actions, unfair competition, nullity of registrations and customs seizures at border control.

When an injunction is issued at the Commercial High Court, it is not automatically stayed if an appeal is made. An application has to be made within 14 days from the date of the order to the Supreme Court to stay the injunction enforceability.

The Commercial High Court of Colombo has exclusive jurisdiction to hear all civil cases in respect of intellectual property matters. Appeals against any orders or judgments from the Commercial High Court are made directly to the Supreme Court.

An appeal will lie for any error in fact or in law.

The work involved and the time spent determines the cost, along with professional fees payable for an external counsel team, if retained.

Any court fee for commencing proceedings is statutorily prescribed.

In a civil action, the court may award costs at the conclusion of the suit. Generally, taxed costs are granted, which will be calculated according to the structure provided.

In a criminal action, the court may order costs to be paid to the accused by the prosecutor, or to the prosecutor by the accused, having regard for the information given by and the conduct of the accused and prosecutor, respectively; the sum so awarded as costs shall be recoverable as if it were a fine.

Although litigation in courts is common in intellectual property cases, if there are agreements such as a licence agreement or NDAs that specifically contain ADR clauses, ADR can be used for:

• meditation;
• arbitration; and
• negotiation and conciliation.

Under Section 88 of the IP Act, a patent can be assigned to a third party through a deed of assignment signed by both parties. However, such deed must be recorded at the NIPO, with payment of the prescribed fees. Hence, the assignment is not effective unless it is recorded at the NIPO.

The procedure for assigning a patent is as follows:

• prepare a deed of assignment signed by the assignor and the assignee; and
• file an application form for the recordal of assignment with the NIPO, along with payment of the prescribed fee and the deed of assignment; and

Once the NIPO records the assignment, it will issue a certificate of assignment confirming recordal of the same. If the application is to be filed by an agent, power of attorney must accompany the foregoing documents.

Chapter 17 of the IP Act provides provisions in respect of licence contracts for patents. Section 90 provides that the licensor may grant the licensee all or any of the rights conferred on the patent owner under Section 84.

The licence agreement must be in writing and signed by both parties. However, it is not a requirement that it be recorded at the NIPO, although this is recommended. If the parties wish to have the licence agreement recorded at the NIPO, Section 91 of the IP Act states that they must submit a written request, along with payment of the prescribed fee. In the same manner, expiry or termination of the licence agreement can also be recorded at the NIPO upon written request (signed by both parties).

Although recordal of the licence contracts is not mandatory under the IP Act, if the parties wish to have the contracts recorded, the procedure is as follows:

• prepare a licence agreement signed by the licensor and the licensee;
• file a written request with the NIPO, along with a copy or extract of the licence agreement and the details of the patent; and
• pay the prescribed fee to the NIPO.