Patents Comparative Guide -

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The primary sources of patent law in Sri Lanka are as follows:

the Intellectual Property Act, No 36 of 2003, as amended, and regulations made thereunder;
the Customs Ordinance (17/1869), as amended, and regulations made thereunder;
decisions of the superior courts of Sri Lanka regarding intellectual property (ie, case law);
international treaties to which Sri Lanka is a party; and
decisions of the National Intellectual Property Office (NIPO).

Intellectual Property Act: The key statute governing patent law in Sri Lanka is the Intellectual Property Act. It provides a comprehensive legal framework for intellectual property in Sri Lanka, including patents. It sets out:

the substantive and procedural requirements for obtaining a patent;
the rights granted to patent owners; and
the remedies available for patent infringement within Sri Lanka.

Specifically with regard to patents, the act addresses the following aspects:

Patentable inventions: The act defines what constitutes a patentable invention, including the criteria of:
- novelty (Section 64);
- inventive step (Section 65); and
- industrial applicability (Section 66).
It also specifies categories that are not patentable under Section 62(3). For example, the following are excluded from patentability:
- discoveries;
- scientific theories;
- mathematical methods;
- plant varieties;
- animal breeds; and
- essentially biological processes.
Right to a patent: Section 67 stipulates who is entitled to obtain a patent, including inventors and joint inventors. Section 69 addresses:
- the ownership of inventions made in the course of employment, or pursuant to a commission; and
- the corresponding rights of employers and employees or of the parties.
Application and procedure for grant: Section 71 outlines the requirements for submitting a patent application, including:
- the prescribed forms;
- a detailed description of the invention;
- claims;
- drawings (if applicable); and
- the payment of prescribed fees.
Sections 73 and 78 to 80 provide details on:
- the substantive examination process;
- the issuance of search reports;
- the publication of the application; and
- the eventual grant of the patent.
Duration of a patent: Section 83 specifies that a patent is valid for a period of 20 years from the date of filing the application, subject to the timely payment of annual renewal fees.
Rights of the patent owner: Section 84 defines the exclusive rights conferred on a patent owner, including the right to prevent others from making, using, offering for sale, selling or importing:
- the patented product; or
- a product obtained directly by the patented process.
Section 86 outlines certain exceptions and limitations to these exclusive rights.
Assignment and licensing: Sections 88 to 97 govern:
- the transfer of ownership of a patent or patent application (assignment); and
- the terms and procedures related to granting licences to use the patented invention.
Surrender and nullity of a patent: Sections 98 to 100 provide mechanisms for voluntarily surrendering a patent and for instituting proceedings to have a patent declared invalid (nullity), either upon the application of:
- the director-general of intellectual property to court; or
- the parties directly to court.
Infringement: Although Part XXXVIII of the act provides general remedies for the infringement of IP rights, specific remedies for patent infringement are:
- interpreted in light of the rights conferred under Section 84; and
- further elaborated through case law.

Regulations made under the Intellectual Property Act: The act grants the minister the authority to promulgate regulations for the purpose of implementing the provisions of the act. These regulations provide further procedural detail, including requirements related to the documentation, fees, time limits, and administrative procedures applicable to patent applications and enforcement.

Examples of such regulations include those published in:

Extraordinary Gazette 1415/18 dated 19 October 2005; and
Extraordinary Gazette 1455/10 dated 17 May 2006.

Customs Ordinance: The Customs Ordinance plays a supporting role in patent enforcement, particularly in relation to the import or export of infringing goods. Section 125A (read together with Section 44) of the Customs Ordinance prohibits the import and export of:

counterfeit trademark goods;
pirated copyright goods; and
any other goods that contravene the Intellectual Property Act.

This provision authorises customs authorities to:

seize infringing goods;
dispose of infringing goods (outside the channels of commerce); or
destroy infringing goods at the border.

Case law: As Sri Lanka adheres to a common law legal system, decisions made by the Sri Lankan courts are a significant source of patent law. Judicial precedents:

interpret and clarify provisions of the Intellectual Property Act; and
provide authoritative guidance on key aspects such as:
- the scope of patentable subject matter;
- the standards of novelty and inventive step;
- the enforcement of patent rights; and
- the nature of available remedies.

Decisions of the Supreme Court and the Court of Appeal are binding on lower courts.

International treaties: Sri Lanka is a party to several international treaties that influence its domestic patent framework. These include the following:

Paris Convention for the Protection of Industrial Property: This provides for the right of priority, allowing applicants that have filed a patent application in one member country to claim priority when filing in another member country, provided that the subsequent application is filed within 12 months.
Patent Cooperation Treaty (PCT): The PCT simplifies the process for seeking patent protection internationally by allowing applicants to file a single international application that can be recognised in multiple member states. Sri Lankan nationals and residents may file PCT applications to pursue patent protection abroad.
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs): As a member of the World Trade Organization, Sri Lanka is required to comply with TRIPs, which sets out minimum standards for the protection, enforcement and effective administration of IP rights, including patents. These obligations influence national laws and judicial interpretation, particularly with respect to:
- enforcement procedures;
- the duration of protection; and
- the availability of legal remedies.

NIPO: The NIPO is the governmental authority established under the Intellectual Property Act responsible for administering the IP regime in Sri Lanka. It oversees the processing, examination, registration and grant of patents. In addition, the NIPO publishes guidelines, forms, procedural instructions and official communications that assist applicants and practitioners in navigating the patent system.

1.2 Who can register a patent?

Any inventor within or outside of Sri Lanka may apply for a patent in Sri Lanka as per the stipulations in Sections 67 and 71 of the Intellectual Property Act. Where two or more persons have jointly made an invention, the right to the patent belongs to them jointly.

If the applicant is not the inventor, the application must be accompanied by a statement justifying the applicant's right to the patent, as required under Section 71(2)(b) of the act. This provision addresses several possible scenarios, as follows.

Employer (under specific conditions): Where an invention is made by an employee in the course of performing their duties under a contract of employment and the contract does not provide otherwise, the right to the patent is deemed to accrue to the employer in terms of Section 69(1).

Additionally, under Section 69(2), even if the employment contract does not specifically require inventive activity, the right to the patent is deemed to accrue to the employer if:

the invention falls within the field of the employer's activities; and
the employee has made the invention using data or means provided by the employer.

Assignee: The inventor, or joint inventors, may assign their right to the patent to another person or entity. In such cases, the assignee may apply for and be granted the patent. Section 88(1) of the Intellectual Property Act requires that such an assignment:

be in writing; and
be signed by or on behalf of the contracting parties.

Pursuant to Section 88(4), the assignment must be recorded in the register maintained by the director-general of intellectual property to have effect against third parties.

Legal representative: In the event of the inventor's death, their legal representative or representatives will generally be entitled to apply for the patent.

Registered agents: While it is possible for applicants to prepare and file the required documents themselves, foreign applicants are subject to specific procedural requirements. Section 71(1)(c) of the act mandates that where the applicant's ordinary residence or principal place of business is outside Sri Lanka, the applicant must act through an agent who is resident in Sri Lanka. The application must be accompanied by a power of attorney granted to the agent by the applicant.

Accordingly, while the primary applicant for a patent in Sri Lanka is the inventor or joint inventors, the right to apply for registration may be exercised by:

an employer;
the commissioner of a work, where the statutory conditions are satisfied; or
an assignee or a transferee under a transmission that has validly acquired the rights from the inventor or inventors.

2 Rights

2.1 What rights are obtained when a patent is registered?

A patent registered in Sri Lanka grants the owner exclusive rights to prevent other persons from exploiting the invention without their consent. As provided in Section 84(1) of the Intellectual Property Act, these exclusive rights include:

the right to exploit the patented invention;
the right to assign or transmit the patent; and
the right to conclude licence contracts.

Pursuant to Section 84(3) of the act, these exclusive rights extend to the ability to prevent others from engaging in the following acts without the owner's authorisation:

making the patented product;
using the patented product;
offering for sale the patented product;
stocking or selling the patented product;
importing or exporting the patented product;
using a patented process; and
performing any of the above acts in relation to a product obtained directly through the use of the patented process.

Accordingly, the patent operates as a legal right that enables the owner to initiate legal proceedings, including an action for infringement under the Intellectual Property Act, against any individual or entity that performs any of the above acts without the owner's consent. Further, Section 181 of the act specifies that wilful infringement of the rights of a patent owner, assignee or licensee constitutes an offence punishable upon conviction.

The grant of a patent in Sri Lanka does not automatically entitle the owner to freely use or exploit their own invention. The owner is still required to ensure that such use does not infringe others' existing IP rights. For example, where the invention incorporates or is dependent on technology protected by an earlier patent, the owner may be required to obtain a licence from the holder of that earlier patent before proceeding with commercial exploitation.

Moreover, Section 86 of the Intellectual Property Act outlines specific statutory limitations on the rights of the patent owner. These limitations include:

acts performed solely for the purpose of scientific research;
the presence or use of patented products on foreign vessels, aircraft, spacecraft or land vehicles that temporarily or accidentally enter Sri Lankan territory; and
acts involving products that have already been placed on the market in Sri Lanka by the patent owner or with its express consent. This last principle is commonly referred to as the 'exhaustion of patent rights'.

In summary, the registration of a patent in Sri Lanka provides the owner with a set of exclusive rights intended to prevent the unauthorised commercial exploitation of the invention. These rights form the basis for legal recourse against infringers. However, the owner must also exercise caution to ensure that its own use of the patented invention:

does not infringe third-party rights; and
is in compliance with the statutory limitations prescribed under the Intellectual Property Act.

2.2 How can a patent owner enforce its rights?

The primary means by which a patent owner in Sri Lanka may enforce its rights is by instituting legal proceedings for patent infringement before the courts.

While the director-general of intellectual property performs important administrative functions in relation to patents, direct enforcement of patent rights through the director-general is not a mechanism for redress. Enforcement generally requires recourse to judicial proceedings. However, the director-general may be involved in legal proceedings relating to the validity of a patent, such as in revocation actions, which can have an indirect effect on the enforcement of those rights.

Accordingly, the following authorities are empowered to enforce IP laws in Sri Lanka in appropriate circumstances, as provided by the Intellectual Property Act.

Director-General of Customs: The director-general of customs in Sri Lanka holds significant enforcement powers at the border to combat the trade of patent-infringing goods under the Customs Ordinance. These powers are typically exercised upon application by patent owners and include the authority to seize, dispose of or destroy infringing goods that are being imported or exported.

Magistrates court: Criminal remedies are available and may be pursued before the magistrates court which has jurisdiction over the area in which the offence is committed.

Section 181 of the Intellectual Property Act permits an action for infringement to be instituted before the magistrates court to protect the rights of:

the registered patent owner;
an assignee; or
a licensee.

Under Section 182 of the Intellectual Property Act, an action may also be brought before the magistrates court against any person that, for industrial or commercial purposes, makes false representations concerning patents.

Additionally, Section 183 provides for legal protection against the unlawful disclosure of confidential information relating to patents.

Such actions may be initiated:

by the police following an investigation into a complaint made by the registered patent owner, assignee or licensee; or
directly by the registered patent owner, assignee or licensee.

Commercial High Court: Pursuant to Section 205 of the Intellectual Property Act, all IP actions in Sri Lanka must be instituted in the Provincial High Court of the Western Province sitting in Colombo, exercising civil and commercial jurisdiction ('Commercial High Court'). The Commercial High Court was established under the High Court of the Provinces (Special Provisions) Act, No 10 of 1996, and holds exclusive jurisdiction over such matters. The procedure applicable to these actions follows the general rules of civil procedure as contained in the Civil Procedure Code of Sri Lanka.

In a civil infringement action, the patent owner may seek a range of remedies, including the following:

Injunctions: A court order restraining the infringer from continuing with the infringing activities. This is often a critical remedy to prevent further unauthorised use of the patented invention.
Damages: Compensation for financial losses suffered by the patent owner due to the infringement. These may include lost profits and other economic harm.
Delivery up or destruction of infringing goods: An order requiring the infringer to hand over or destroy infringing products and any materials used in their manufacture.
Declaratory relief: A declaration by the Commercial High Court confirming the patent's validity and the defendant's infringing conduct.

2.3 For how long are patents enforceable?

A patent is granted in Sri Lanka for a period of 20 years from the date of filing of the application, as stipulated in Section 83(1) of the Intellectual Property Act. However, the enforceability of the patent throughout this term is subject to the fulfilment of the following conditions.

Fees: Once a patent is granted in Sri Lanka, annual renewal fees (patent annuities) must be paid to the National Intellectual Property Office in order to maintain the patent's validity for the full 20-year term. These annuities fall due starting from the expiration of the second year from the date of the grant and must be paid annually before the anniversary of the filing date. Failure to pay the patent annuities before the applicable due date can result in the patent lapsing. A grace period is typically available for late payment, subject to the payment of a surcharge. The amounts of the annuities increase progressively over the patent term and also vary depending on the category of the applicant.

The approximate annuity fees (as of May 2025), excluding value-added tax, are as follows.

Extension	Students	Individuals	Others
First extension (Year 3)	LKR 1,725	LKR 3,450	LKR 4,600
Second extension (Year 4)	LKR 1,725	LKR 4,025	LKR 5,750
Third extension (Year 5)	LKR 2,300	LKR 4,600	LKR 8,050
Fourth extension (Year 6)	LKR 2,875	LKR 5,750	LKR 9,200
Fifth extension (Year 7)	LKR 3,450	LKR 6,900	LKR 11,500
Sixth extension (Year 8)	LKR 4,025	LKR 8,050	LKR 13,800
Seventh extension (Year 9)	LKR 4,600	LKR 9,200	LKR 16,100
Eighth extension (Year 10)	LKR 5,175	LKR 11,500	LKR 18,400
Ninth extension (Year 11)	LKR 5,750	LKR 12,650	LKR 20,700
Tenth extension (Year 12)	LKR 6,325	LKR 13,800	LKR 23,000
Eleventh extension (Year 13)	LKR 6,900	LKR 14,950	LKR 25,300
Twelfth extension (Year 14)	LKR 7,475	LKR 16,100	LKR 26,450
Thirteenth extension (Year 15)	LKR 8,050	LKR 17,250	LKR 28,750
Fourteenth to eighteenth extension (Years 16 to 20, each)	LKR 8,625	LKR 23,000	LKR 40,250

The patent owner has the right to voluntarily surrender the patent prior to the expiration of the 20-year term, in accordance with Section 98 of the act. In such cases, the rights conferred by the patent will cease upon acceptance of the surrender by the director-general of intellectual property.

Revocation or invalidation: A patent may be revoked or declared invalid under the circumstances set out in Sections 99 and 100 of the Intellectual Property Act. Grounds for nullification include the following, among others:

The invention is not patentable;
The patent was obtained fraudulently; or
The disclosure contained in the patent is insufficient.

Nullification proceedings:

may be initiated by an interested person by submitting an application to the director-general (during the publication period); or
may arise by way of a counterclaim in infringement proceedings before the court.

Once nullified, the patent ceases to be enforceable.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The governing body responsible for the patent registration procedure in Sri Lanka is the National Intellectual Property Office (NIPO). In accordance with Section 2 of the Intellectual Property Act, all applications for the grant of patents in Sri Lanka must be submitted to the director-general of intellectual property, who is the head of the NIPO.

Sri Lanka does not operate a parallel system for patent registration. Patent protection in Sri Lanka is obtained exclusively through an application filed directly with the NIPO. However, applicants seeking patent protection in multiple countries, including Sri Lanka, may file an international application under the Patent Cooperation Treaty (PCT). If Sri Lanka is designated in the PCT application, the application must eventually enter the national phase in Sri Lanka, at which point it will be processed by the NIPO in accordance with the Intellectual Property Act and its procedures.

3.2 What is the cost of registration?

The fees payable to the NIPO for patent registration vary depending on the type of applicant. As of May 2025, the approximate application fees and other relevant charges, and the applicable value-added tax (VAT), are as follows.

Patents		LKR	VAT (18%)	Total
1.	On application for the grant of a patent
	Students (from schools, technical and other similar colleges, and university undergraduates)	1150	207	1357
	Individuals	2875	517.50	3392.50
	Others (eg, partnerships, companies, societies)	6900	1242	8142
2.	On request to refer an application to a local examiner	1150	207	1357
3.	On inspection by the inventor of the application	115	20.70	135.70
4.	For the preparation of an abstract by the director general	3450	621	4071
5.	For obtaining copies of documents relating to a patent (A4 size page or part thereof)	115	20.70	135.70
	Each additional page or part thereof	57.50	10.35	67.85
	For a page of documents not specified above (A4 size page or a part thereof)	57.50	10.35	67.85
6.	For obtaining the certified copies of documents referred to in item 5 on one page	230	41.40	271.40
6.	Each additional page or a part thereof	57.50	10.35	67.85
7.	On application for the assignment or transmission of a patent application or patent	1725	310.50	2035.50

There is no official grant fee payable upon the acceptance of the patent application.

3.3 What are the grounds to reject a patent application?

The grounds for rejecting a patent application in Sri Lanka are primarily based on the requirements for patentability and the sufficiency of the disclosure, as outlined in the Intellectual Property Act.

A patent application may be rejected by the director-general of intellectual property on the following substantive grounds:

Lack of novelty: The invention is not new, meaning that it has been disclosed to the public anywhere in the world (whether by publication in tangible form, oral disclosure, use or in any other manner) prior to the filing date or the valid priority date of the application (Section 64 of the Intellectual Property Act).
Lack of inventive step (non-obviousness): The invention does not involve an inventive step, meaning that it would have been obvious to a person skilled in the relevant art, having regard to any matter that formed part of the state of the art (Section 65 of the act).
Lack of industrial applicability: The invention is not capable of industrial application, meaning that it cannot be made or used in any type of industry, including agriculture (Section 66 of the act).
Excluded subject matter: The invention falls within categories that are explicitly excluded from patentability under Section 62(3) of the act. These include:
- discoveries, scientific theories, and mathematical methods;
- schemes, rules or methods for doing business, performing purely mental acts, or playing games;
- methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the human or animal body (this exclusion does not apply to products – in particular, substances or compositions – for use in any such methods); and
- plant varieties and animal breeds, and essentially biological processes for the production of plants or animals, other than microbiological processes and the products thereof.
Insufficient disclosure: The application does not disclose the invention in a manner that is sufficiently clear and complete for the invention to be carried out by a person skilled in the art. Section 71(2)(a) of the act requires the application to contain a description of the invention with sufficient clarity and completeness.
Claims not meeting requirements: The claims in the patent application do not comply with the requirements set out in Section 71 of the act. Specifically, the claims must:
- describe the matter for which protection is sought;
- be clear and concise;
- be fully supported by the description; and
- relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (unity of invention).

In addition to these substantive grounds, a patent application may also be rejected on procedural grounds, such as:

failure to comply with the formal requirements for the application, including the prescribed form and contents (Section 71 of the act);
failure to pay the prescribed fees within the stipulated time limits (Section 72 of the act);
failure of a foreign applicant to be represented by a local agent and to provide a power of attorney (Section 71(1)(c) of the act); and
failure to request a formal examination within the prescribed period.

These grounds for rejection are assessed by the examiners at the NIPO during the examination process. If the application is found to be deficient on any of these grounds, the director-general of intellectual property may refuse to grant the patent.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

Sri Lanka has no clearly defined fast-track programmes under the Intellectual Property Act. Applicants in Sri Lanka primarily follow the standard examination procedure. To potentially expedite their application within the existing framework, they may ensure timely filing of the request for examination after publication. The NIPO may consider requests for expedited processing in cases deemed to be of significant national importance. Such requests will likely involve an assessment by an examiner to determine the merit and urgency of the request based on its potential national impact.

Nevertheless, the Intellectual Property Act recognises the right to priority under the Paris Convention for the Protection of Industrial Property. This allows applicants that have filed a patent application in one member country to claim priority when filing in Sri Lanka, provided that the subsequent application is filed within 12 months of the earlier application.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

Sri Lanka does not permit multiple dependent claims.

The Intellectual Property Act sets out specific types of claims that are not permissible for patentability. In particular, Section 62(3) of the act provides that patents will not be granted for the following subject matter:

discoveries, scientific theories and mathematical methods;
plants, animals and other micro-organisms, other than transgenic micro-organisms, and essentially biological processes for the production of plants and animals, other than non-biological and microbiological processes. However, a patent granted in respect of micro-organisms will be subject to the act's provisions;
schemes, rules or methods for doing business, performing purely mental acts or playing games;
methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body. However, any product used in any such method will be patentable;
any invention which is useful in the utilisation of special nuclear material or atomic energy in an atomic weapon; and
any invention whose commercial exploitation within Sri Lanka must be prevented in order to protect public order or morality, including:
- to protect human, animal or plant life or health; or
- to avoid serious prejudice to the environment.

These exclusions reflect public policy considerations and aim to ensure that medical and veterinary practitioners can perform surgical, therapeutic and diagnostic procedures without the risk of infringing any patent rights.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

The term of a patent in Sri Lanka is 20 years from the date of filing.

The Intellectual Property Act:

does not contain any mechanisms for extending the patent term beyond 20 years; and
does not permit any extension of the patent term due to delays at the NIPO.

Accordingly, applicants cannot claim additional time or compensation for any administrative delays in the grant of the patent. Furthermore, Sri Lanka does not:

provide for pharmaceutical patent term extensions; or
recognise supplementary protection certificates.

Despite any such delays, the rights conferred by the patent are effective from the date of filing. Therefore, a patent owner may initiate infringement proceedings even before the formal grant of the patent, provided that:

the infringing acts occurred after the filing date; and
the patent is subsequently granted.

3.7 What subject matter is patent eligible?

According to the Intellectual Property Act, the following subject matter is eligible for patent protection, provided that it satisfies the requirements of novelty, inventive step and industrial applicability, as set out in Sections 64, 65 and 66 of the act:

Products: Broadly including tangible items or substances.
Processes: Methods, procedures or steps for achieving a particular result.

The terms 'products' and 'processes' are not defined under the act.

However, Section 62 of the act expressly excludes certain categories of subject matter from patentability, even if they meet the general patentability criteria. These exclusions are more fully detailed under question 3.5.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

Yes, if the director-general of intellectual property refuses to grant a patent, the applicant has a right of appeal. Section 173 of the Intellectual Property Act provides the mechanism for appealing decisions or orders made by the director-general under the act.

Accordingly, any person aggrieved by a decision or order made by the director-general (including where he rejects a patent application) may, within six months and in the prescribed manner, appeal to the Commercial High Court.

Further, Section 173(5) of the act provides that any party that is dissatisfied with the decision of the Commercial High Court may appeal to the Supreme Court against such order for the correction of any error in fact or in law.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

The primary avenues for challenging the validity of a patent in Sri Lanka are by:

filing an action before the Commercial High Court seeking a declaration of nullity; or
raising invalidity as a defence in proceedings for patent infringement.

4.2 How can the validity of an issued patent be challenged?

Any person that can demonstrate a legitimate interest or the director-general of intellectual property may file an application with the Commercial High Court under Section 99(1) of the Intellectual Property Act, seeking a declaration that a patent is null and void. The patent owner, along with any person recorded as an assignee, licensee or sub-licensee of the patent, must be named as parties to such an application.

4.3 What are the grounds to invalidate an issued patent?

The Commercial High Court may declare a patent null and void on several grounds, as set out in the Intellectual Property Act. To successfully challenge the validity of a patent, the party seeking nullity must present adequate evidence to satisfy the Commercial High Court that one or more of the grounds under Section 99 are applicable:

Does not qualify as an invention (Section 62(1): The party challenging the patent must establish that the subject matter claimed does not qualify as an 'invention' within the meaning of Section 62(1) of the act.
Right to the patent (Section 68): The party challenging the patent has a superior right to the patent compared to the present holder. This may arise where the challenger:
- is the actual inventor; or
- possesses a prior entitlement to the invention.
The essential element of an invention claimed in a granted patent has been unlawfully derived from the invention of the challenger that is the rightful holder of the patent. As an alternative to nullification, the rightful holder may file an application with the Commercial High Court requesting that the granted patent be assigned to it.
Lack of novelty (Section 64): The challenger must establish that the claimed invention was already known or publicly disclosed anywhere in the world prior to grant. This can be done by producing prior use or prior art – such as documents, products, processes or other publicly available material – that existed before the patent application's filing date. The evidence must demonstrate that every element of the claimed invention was disclosed in a prior art reference (anticipation). In the recent case of Dialog Axiata PLC vs Orleander International Limited (CHC/12/2013/IP), also known as the 'eZ Cash' case, it was held that failure to disclose relevant prior art can result in a declaration of nullity as it undermines the assessment of novelty and inventive step.
Lack of inventive step (Section 65): The challenger must prove that the claimed invention would have been obvious to a person skilled in the relevant technical field at the time the invention was made. This typically involves presenting a combination of prior art references and expert testimony showing that the invention is a mere aggregation or obvious modification of known technologies. An example would be a straightforward combination of existing technologies that would have been apparent to a skilled person in the field. The eZ Cash case underscored the significance of prior art in evaluating inventive step.
Lack of industrial applicability (Sections 63 and 66): The challenger must establish that the invention cannot be made or used in any kind of industry. This ground may be invoked where the invention lacks a practical or technical application. It is infrequently used in practice and typically relies on technical or scientific evidence.
Excluded subject matter (Section 62(3) or Section 79(1)): The challenger must prove that the claimed invention falls into one of the excluded categories, such as:
- discoveries, scientific theories and mathematical methods;
- schemes, rules or methods for doing business, performing purely mental acts, or playing games;
- methods for the treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body (subject to specified exceptions);
- plants and animals other than micro-organisms and essentially biological processes for the production of plants or animals (subject to specified exceptions); and
- inventions whose commercial exploitation would be contrary to public order or morality.
This ground requires evidence of the nature of the claimed invention and how it fits within the exclusions set out above.
Insufficient disclosure (Sections 71(3) and 71(4)): The challenger must show that:
- the patent specification is not sufficiently clear or complete to enable a person skilled in the art to carry out the invention; or
- the claims fail to clearly define the protection sought.
The description must provide adequate technical information to enable replication of the invention without requiring undue experimentation. This ground typically requires expert testimony to demonstrate ambiguity or inadequacy in the disclosure. Further, the challenger may also show that the claims set out in the patent application are broader than what is disclosed in the description. Since the claims define the legal scope of protection, they must be adequately supported by the technical content disclosed in the specification.
Failure to furnish required drawings (Section 99(1)(c)): The challenger must show that the patent application omitted drawings necessary for understanding the invention. This involves a factual assessment of the contents of the patent documentation.

4.4 What is the evidentiary standard to invalidate an issued patent?

The evidentiary standard applicable in Sri Lanka for invalidating an issued patent is based on the quality and sufficiency of the evidence presented. The party challenging the validity of the patent must provide evidence that convinces the Commercial High Court that it is more likely than not that one or more of the statutory grounds for nullity under the Intellectual Property Act have been satisfied.

Although the act does not expressly specify a particular evidentiary standard for patent nullity proceedings, the burden of proof in civil litigation in Sri Lanka, applicable to such proceedings rests on the party asserting the claim. Therefore, the party seeking to invalidate the patent (whether as an applicant for nullity or as a defendant in an infringement action raising invalidity as a defence) carries the burden of establishing the relevant grounds for invalidity.

The applicable standard of proof in civil proceedings is the balance of probabilities. This requires the challenging party to demonstrate, through the evidence presented, that it is more probable than not that at least one ground for invalidity exists.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

Sri Lanka does not have a formal opposition procedure administered by the National Intellectual Property Office (NIPO). If a person wishes to challenge a decision made by the NIPO regarding a granted patent, it must initiate proceedings before the Commercial High Court to challenge the validity of a patent.

4.6 Who can oppose a granted patent?

Under Sri Lankan law, there is no formal administrative opposition process.

Nevertheless, the validity of a granted patent may be challenged through judicial proceedings before the Commercial High Court. The Intellectual Property Act permits several parties to initiate or participate in such challenges, either by:

filing a standalone action for nullity; or
raising invalidity as a defence in infringement litigation.

The following categories of persons and authorities are entitled to challenge a granted patent:

Any interested party may challenge the validity of a granted patent.
Any person that can demonstrate a legitimate interest may apply to the Commercial High Court for a declaration of nullity.
The director-general of the NIPO also has the authority to apply to the Commercial High Court for a declaration of nullity.
A defendant in a patent infringement action may raise invalidity as a defence and challenge the validity of the patent in the course of those proceedings.

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

The timing requirements for such challenges vary depending on the legal mechanism invoked, as outlined below.

Limited pre-grant intervention (Section 79(2)): Where a patent application has been submitted without an international search report, a public notice is issued by the director-general of intellectual property stating that the patent will be granted after three months from the date of publication of the notice. During this three-month period, any interested party may seek a remedy from the Commercial High Court to prevent the grant of the patent. This constitutes a limited, time-sensitive opportunity to raise objections prior to the formal grant of the patent.

Application to the Commercial High Court for nullity (Section 99): The Intellectual Property Act does not prescribe a specific time limit within which an application for nullity must be filed following the grant of a patent. Therefore, a nullity action may be brought at any time during the 20-year term of the patent's validity. However, in exceptional cases, the court may consider equitable doctrines, such as laches, where there was an unreasonable delay in initiating proceedings that has caused prejudice to the patent owner.

4.8 What are the grounds to file an opposition?

Sri Lanka does not have a formal opposition procedure administered by the NIPO.

4.9 What are the possible outcomes when an opposition is filed?

Sri Lanka does not have a formal opposition procedure administered by the NIPO.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

The burden of proof generally rests with the opponent or the party challenging the patent before the court. While the initial obligation to present evidence lies with the opponent, if a strong prima facie case is established against the patentability of the invention, the burden may shift to the applicant. In such instances, the applicant will be required to submit evidence demonstrating that the invention satisfies the statutory requirements for patentability. The applicable legal standards are as set out in the Intellectual Property Act and are more fully described in question 4.8.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

A person that is dissatisfied with a decision of the Commercial High Court may pursue the following avenues of appeal:

If a person is dissatisfied with a judgment delivered by the court and is a party to the relevant action, proceeding or matter, it may appeal to the Supreme Court of Sri Lanka on the grounds of any error in fact or in law contained in that judgment.
If a person is dissatisfied with an order made by the court in the course of any proceedings and is, or seeks to be, a party to the relevant action, proceeding or matter, it may appeal to the Supreme Court of Sri Lanka for the correction of any error in fact or in law. However, such an appeal may be instituted only with the prior leave of the Supreme Court.

For further related provisions and context, please refer to questions 4.2 and 4.3.

5 Patent enforceability

5.1 What makes a patent unenforceable?

A patent may be deemed unenforceable under Sri Lankan law if it violates specific provisions of the Intellectual Property Act. Section 99 of the act outlines the legal grounds on which a patent may be rendered unenforceable, including contraventions of Sections 62(1), 62(3) and 79(1):

Section 63 provides that for an invention to be patentable, it must:
- be new;
- involve an inventive step; and
- be industrially applicable.
If any of these essential criteria is not met, the resulting patent is not enforceable.
Section 62(3) identifies specific subject matter that does not qualify as an invention, including:
- discoveries;
- scientific theories;
- mathematical methods;
- aesthetic creations; and
- similar exclusions.
A patent granted in respect of such non-patentable subject matter may be rendered unenforceable.
Section 86(2) relates to the grant of compulsory licences under certain statutory conditions. While a compulsory licence does not in itself invalidate a patent, the rights of the patent owner may be restricted, affecting the enforceability of the patent in practice.
In addition, Sections 71(3) and 71(4) require that the patent application disclose the invention in a manner that is sufficiently clear and complete for a person skilled in the art to carry out the invention. If the disclosure is inadequate, the patent may be deemed unenforceable due to insufficient description.

A patent may also be considered unenforceable if it was granted to a person that is not entitled to the patent. If it is established that the right to the patent belongs to another person, the actual rights holder may seek legal redress, including reassignment or nullity.

Finally, the absence of necessary drawings, where such visual representations are essential to understanding the claimed invention, may also be grounds for unenforceability. Drawings often play a crucial role in illustrating the technical aspects of the invention and supporting the written description.

5.2 What are the inequitable conduct standards?

Sri Lankan law does not explicitly refer to the concept of 'inequitable conduct'. However, analogous legal standards are established under various provisions of the Intellectual Property Act which address:

misconduct in the patent application process; and
the enforcement of patent rights.

A patent may be nullified if it was obtained by:

false representation;
misrepresentation;
fraudulent means; or
the omission of material facts.

This includes misstatements that materially affect the validity of the patent and undermine the integrity of the grant process. For instance, if an applicant knowingly withholds prior art or submits misleading technical or scientific data to the National Intellectual Property Office, the resulting patent may be declared invalid. This provision aims to ensure that patents are granted only when the applicant has acted with full candour and good faith.

Sri Lankan law also places importance on the correct identification of inventors. If an individual is wrongly identified or improperly excluded as an inventor, the validity of the patent can be challenged under Section 99(1). This:

ensures that patent rights are granted only to those who are legally entitled to them; and
prevents the misappropriation of intellectual contributions.

Section 64 requires applicants to submit a declaration relating to the novelty of the invention and any prior disclosures. This obligation:

promotes transparency in disclosing relevant information; and
underpins equitable treatment in assessing the validity of patent claims.

The Intellectual Property Act further addresses dishonest commercial conduct. Section 160 defines 'unfair competition' as any act or practice carried out in the course of industrial or commercial activity that is contrary to honest practices. This broad provision captures conduct that, while not strictly within the application process, may undermine the fairness of market participation.

Additionally, Section 182 of the act addresses false representations in connection with patents. It prohibits persons from:

falsely representing that a product is patented when it is not; or
making misleading statements regarding the scope or status of patent protection for the purpose of commercial gain.

These rules reinforce the need for accuracy and integrity in the public disclosure and use of patent rights.

Taken together, these provisions serve a function similar to the doctrine of inequitable conduct found in other jurisdictions. They ensure that:

patent rights are pursued and exercised in good faith; and
any abuse of the system through dishonest or misleading practices can be corrected through nullification or other legal remedies.

5.3 What duty of candour is required of the patent office?

Patent applicants owe a duty of candour which requires them to disclose all relevant information pertaining to their inventions, as follows:

All information contained in the patent application, including the description and claims, must be accurate, complete and not misleading. If any error or omission is discovered, the applicant is obliged to correct such information promptly to remain compliant with the law.
Applicants must fully disclose all prior art that is relevant to the assessment of novelty. Any concealment of relevant prior art or submission of misleading data may result in:
- the rejection of the application; or
- the subsequent nullification of the granted patent.
Sections 70 and 71 require the applicant to make an accurate declaration of the true inventor. Any misrepresentation in this regard may result in the nullification of the patent under Section 99(1).

These obligations are essential to ensure that the patent system functions fairly and that exclusive rights are granted only to those who are legally and factually entitled to them.

6 Patent infringement

6.1 What constitutes patent infringement?

A violation of the rights conferred on a patent owner, as set out in Section 84 of the Intellectual Property Act, constitutes an act of infringement. Section 181 of the act specifically addresses wilful infringement and provides for criminal penalties in such cases.

In addition to criminal liability, the act provides for civil remedies for patent infringement under Section 170. These civil remedies:

do not require proof that the infringement was wilful; and
may include injunctive relief and the award of damages.

Civil litigation for patent infringement is governed by the Civil Procedure Code. In civil proceedings, the burden of proof rests on a balance of probabilities. In contrast, in criminal proceedings for wilful infringement under Section 181, the prosecution must prove the offence beyond a reasonable doubt. This evidentiary standard is higher than that required in civil cases.

6.2 Does your jurisdiction apply the doctrine of equivalents?

Sri Lankan law does not explicitly recognise or reject the doctrine commonly known as the 'doctrine of equivalents'. There is no specific provision in the Intellectual Property Act that directly refers to or codifies the doctrine of equivalents. Nonetheless, in practice, the courts may consider functional or substantive similarities in determining whether infringement has occurred, particularly in cases where a strict, literal interpretation of the claims would defeat the purpose of patent protection.

Moreover, the principles governing claim interpretation and the legal framework for determining infringement indicate that the Sri Lankan courts may assess whether an allegedly infringing product or process is, in substance, equivalent to the patented invention, even if it differs in minor respects from the literal wording of the claims.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

A party cannot be held liable under Sri Lankan law for patent infringement that takes place outside the jurisdiction of Sri Lanka. Patent rights granted under the Intellectual Property Act are territorial in nature and are enforceable within the territory of Sri Lanka. Therefore, acts of infringement occurring entirely outside Sri Lanka do not fall within the scope of enforcement under Sri Lankan patent law.

6.4 What are the standards for wilful infringement?

In Sri Lanka, the standard for wilful patent infringement is expressly provided in Section 181 of the Intellectual Property Act, which states: "Any person who wilfully infringes the rights of any registered owner, assignee or licensee of a patent shall be guilty of an offence ..."

Although the act does not specifically define the term 'wilfully', it is generally interpreted to mean a deliberate act committed with knowledge or reason to believe that the conduct constitutes an infringement of a valid and existing patent. This aligns with definitions in legal dictionaries, such as acting:

"intentionally, purposefully, and persistently, even after being aware of the potential consequences"; or
with "a clear intention to break the law".

To establish wilful infringement under the act, it must be demonstrated that the infringer knowingly engaged in conduct that violated the patent rights of the holder, with awareness of the patent's existence and validity. A finding of wilful infringement may result in financial penalties and imprisonment. Penalties may be enhanced in instances involving repeat offenders.

6.5 Which parties can bring an infringement action?

The primary parties that may bring a patent infringement action in Sri Lanka are:

the registered patent owner; and
any assignee of the patent.

A licensee may also initiate an infringement action, provided that the terms of the licence agreement grant such a right. The ability of a licensee to sue will depend on whether:

the licence is exclusive; and
the licensee is expressly permitted under the licence to enforce the patent rights:
- in its own name; or
- in the name of the patent owner.

6.6 How soon after learning of infringing activity must an infringement action be brought?

There is no specific time limit under the Intellectual Property Act for initiating a patent infringement action. However, Section 202 of the act establishes the statute of limitations for prosecuting offences. It provides that no prosecution shall be commenced after the expiration of three years from the date the offence was committed or two years from the date the offence was discovered by the prosecutor, whichever occurs first. This provision ensures that offences are prosecuted within a reasonable period, acknowledging that some infringements may not be immediately detectable.

Although the act does not specify a time limit for filing civil actions for patent infringement, the general prescriptive period under the Prescription Ordinance (as amended) applies. Accordingly, a civil action involving loss, injury or damage, such as IP infringement, must be brought within two years of the date on which the cause of action arises.

In any event, undue delay in initiating proceedings may prejudice the claimant due to the doctrine of laches, which may be invoked where delay results in an unfair disadvantage to the other party.

6.7 What are the pleading standards to initiate a suit?

Initiating a suit in Sri Lanka requires the plaintiff to file a plaint that complies with the detailed requirements set out in Chapter VII of the Civil Procedure Code. The plaint must:

clearly identify the parties involved;
state the material facts giving rise to the cause of action;
specify the relief sought;
provide the value of the action for the purpose of determining jurisdiction;
be duly signed and verified by the plaintiff or an authorised representative; and
be accompanied by any necessary supporting documents.

6.8 In which venues may a patent infringement action be brought?

Patent infringement actions in Sri Lanka must be brought before the Commercial High Court, which has sole and exclusive civil jurisdiction over IP matters. In cases involving criminal liability arising from patent infringement, jurisdiction is vested in the magistrates court.

6.9 What are the jurisdictional requirements for each venue?

Civil actions for patent infringement must be instituted before the Commercial High Court sitting in Colombo; whereas criminal proceedings arising from patent infringement must be instituted before the magistrates court with jurisdiction over the area in which the offence is committed.

6.10 Who is the fact finder in an infringement action?

In Sri Lanka's adversarial system of adjudication, the burden of proof lies with the party making the claim. This requirement is consistent with Section 101 of the Evidence Ordinance, which governs the presentation of evidence in legal proceedings. The fact-finder, typically the judge, assesses the evidence presented by both parties to determine the outcome.

6.11 Does the fact finder change based on venue?

Yes, the fact finder can change depending on the venue in Sri Lanka. In civil patent infringement actions, the fact finder is a judge of the Commercial High Court, as it has exclusive civil jurisdiction over IP matters. In criminal patent infringement cases, the fact finder is a magistrate of the relevant magistrates court, as it has criminal jurisdiction over such matters.

6.12 What are the steps leading up to a trial?

Under the Civil Procedure Code, the steps leading up to a trial in a regular civil action may be summarised as follows:

Institution of the action (plaint): The plaintiff initiates the lawsuit by filing a plaint that outlines the facts and claims of the case.
Issuance and service of summons: The court issues a summons to the defendant, notifying it of the legal action.
Signing of summons by the registrar: The summons must be signed by the registrar of the court before it is served on the defendant.
Filing of answer: The defendant responds to the plaint by filing an answer, addressing the claims made by the plaintiff.
Replication (if permitted): The plaintiff may file a replication to address any new points raised in the defendant's answer.
Pre-trial conference: A pre-trial conference is held to:
- address procedural issues;
- clarify the matters in dispute; and
- facilitate the trial process.
Filing of lists of witnesses and documents: Both parties must file lists of the witnesses and documents that they intend to rely on during the trial.
Setting of the trial date after pre-trial: Following the pre-trial conference, the court finalises and schedules the trial date after considering the parties' readiness.

These steps ensure that the case is properly prepared and ready for trial, allowing both parties the opportunity to present their evidence and arguments.

6.13 What remedies are available for patent infringement?

Remedies available under the Intellectual Property Act: Section 170(1) of the act outlines the remedies available to a rights holder (including a patent owner) whose rights have been infringed or are being threatened. Once the Commercial High Court is satisfied that infringement or a likelihood of infringement exists, it has the power to grant the following remedies:

Injunction: An order to restrain the infringing party from:
- continuing the infringement; or
- taking actions that are likely to lead to infringement.
This can be granted alongside other remedies, such as damages.
Damages: An order requiring the infringer to pay monetary compensation to the rights holder for the loss or harm suffered as a result of the infringement.
Other relief: The court has broad discretion to grant any other relief it deems just and equitable based on the circumstances of the case.

Additionally, Section 170(3) specifies the Commercial High Court's power to order the following:

Compensatory damages and recovery of profits: The infringer must pay damages to adequately compensate the rights holder for the loss caused by the infringement. The Commercial High Court can also order the infringer to surrender any profits gained from the infringing activity.
Disposal or destruction of infringing goods: The Commercial High Court can order the infringing goods to be removed from commercial channels (eg, being sold outside regular markets) or destroyed, with no compensation to the infringer.
Disclosure of evidence: Subject to the protection of confidential information, the Commercial High Court can compel the opposing party to disclose relevant evidence that is under its control, provided that the claimant has:
- presented reasonably available evidence; and
- shown that crucial evidence lies with the opponent.

Section 170(10) also provides an alternative remedy: the rights holder can elect, before the final judgment, to recover statutory damages instead of having to prove actual damages.

Remedies available under the Customs Ordinance: Section 125A and Section 125B of the Customs Ordinance provide for border control measures to address IP violations occurring in the course of importation and exportation. These provisions empower the director-general of customs and the courts with broad authority to prevent IP violations at the border. This aligns with the obligations under Article 51 of the Agreement on Trade-Related Aspects of Intellectual Property Rights for ensuring effective enforcement measures against the cross-border movement of infringing goods.

6.14 Is an appeal available and what are the grounds to appeal?

Yes, an appeal is available against decisions or orders of the director-general of intellectual property to the Commercial High Court. The grounds for appeal include:

errors of law;
errors of fact;
procedural irregularities;
decisions made against the weight of the evidence;
improper exercise of discretion; and
decisions made in excess of jurisdiction.

A further appeal to the Supreme Court is available on a question of law, subject to obtaining leave to appeal.

7 Discovery

7.1 Is discovery available during litigation?

Yes. In Sri Lanka, discovery is available during litigation, particularly in civil proceedings. The Civil Procedure Code provides mechanisms for both discovery of documents and interrogatories to ensure that all relevant facts and evidence are available prior to trial.

7.2 What kinds of discovery are available?

Sections 101, 102 and 104 of the Civil Procedure Code outline key pre-trial procedures intended to streamline litigation, minimise costs and ensure a fair and informed trial by facilitating the disclosure and admission of relevant documentary evidence. These provisions empower parties to access information in the possession of their opponents and to establish the authenticity of key documents prior to trial.

Section 101 (admission of documents): This section permits a party to request that the opposing party admit the genuineness of specific material documents by serving a notice issued on an ex parte motion at least 15 days prior to the pre-trial conference. The admission must be made in writing and signed, although admission does not automatically make the document admissible in evidence. If a party fails to serve such a notice, that party may not recover costs incurred in proving the document at trial. If the opposing party unjustifiably refuses to admit the document within four days of receiving the notice, the cost of proving the document may be imposed on that party.

Section 102 (discovery of documents): This section allows the court, either on its own motion or on the application of a party, to order the opposing party to disclose by affidavit all documents relevant to the issues in the case that are in their possession, custody or power. Such an application may be made up to 15 days before the pre-trial conference. The affidavit must:

list the documents;
distinguish those for which production is objected to; and
state the reasons for such objections.

Section 104 (inspection and production): This section permits a party to file an ex parte motion at least 15 days before the pre-trial conference, seeking a court order to serve notice on the opposing party to produce for inspection any documents referred to in their pleadings or affidavits. If the opposing party fails to comply with such notice without a valid reason, it may be barred from using that document as evidence during the trial.

Additionally, Section 94 addresses interrogatories, which permit a party, with the court's leave, to submit written questions to the opposing party to be answered on oath. The purpose of interrogatories is to obtain admissions of fact or to clarify matters in dispute, thereby narrowing the issues for trial and saving time and expense.

Furthermore, the Civil Procedure Code recognises electronic documents, which enhances the scope and effectiveness of the discovery process. This provides a clear legal basis for obtaining digital evidence in patent litigation. Accordingly, parties may request the production and, where necessary, the inspection of electronic records and systems. Such requests:

are subject to judicial oversight; and
must comply with the general principles governing civil procedure.

7.3 Are there any limitations to the amount of discovery allowed?

Yes, there are limitations on discovery in Sri Lankan litigation. The court has the authority to reject discovery requests that are:

excessive;
irrelevant; or
intended to cause delay in proceedings.

Under Section 94 of the Civil Procedure Code, a party cannot serve more than one set of interrogatories on the same person without obtaining prior permission from the court. This limitation is intended to:

prevent imposing an undue burden on the parties; and
ensure that interrogatories are used efficiently.

Section 108 of the Civil Procedure Code provides that the court may reserve its decision on any application for discovery or inspection if it deems this necessary. This means that the court has the discretion to limit or postpone discovery requests based on the circumstances of the case.

There is no general disclosure obligation recognised in Sri Lanka and any request for disclosure should be specific to be allowed by the court. Therefore, any request made by a person should not be open ended, such as a request intended merely to determine what types of documents the opposing party may possess.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

The interpretation and definition of claim terms in a patent infringement action are typically addressed during the pre-trial conference. The parties are expected to agree on the construction of claim terms at this stage to narrow the issues for trial and such agreed interpretations are then accepted by the court. If the parties are unable to reach agreement, the Commercial High Court may be required to determine the meaning of the claim terms based on the pleadings, expert evidence and legal submissions presented at or before the pre-trial stage.

8.2 What is the legal standard used to define claim terms?

Claim terms are generally defined with reference to the Civil Procedure Code, which requires pleadings to include a concise statement of the material facts constituting the cause of action. The pleadings must also:

state the value of the claim;
clearly specify the reliefs sought by the plaintiff; and
identify:
- the nature of the plaintiff's interest in the subject matter; and
- the basis on which the defendant is alleged to be liable.

8.3 What evidence does the tribunal consider in defining claim terms?

The court will consider evidence in accordance with the framework established by the Evidence Ordinance, which sets out the rules for determining the admissibility and relevance of evidence. In defining claim terms, the court will take into account all evidence deemed to be relevant and admissible under the Evidence Ordinance. The procedure for presenting, evaluating and weighing such evidence is governed by the Civil Procedure Code, which regulates civil litigation proceedings.

9 Remedies

9.1 Are injunctions available?

Yes, injunctions are available under Sri Lankan law, including:

enjoining orders;
interim injunctions; and
permanent injunctions.

Enjoining orders are generally granted ex parte at the initial stage by the Commercial High Court to prevent further infringement of patent rights. These orders are typically converted into interim injunctions after considering the position of the opposing party to prevent further infringement of patent rights until a final decision is made. The court also has the discretion to grant a full and final injunction, effectively preventing the issuance of the patent.

9.2 What is the standard to obtain an injunction?

To obtain an injunction in Sri Lanka, the applicant must satisfy the following conditions:

Prima facie case: There must be a clear and convincing case of patent infringement.
Irreparable harm: The applicant must demonstrate that it would suffer irreparable harm if the injunction were not granted.
Balance of convenience: The harm to the applicant from not granting the injunction must outweigh the harm to the respondent from granting it.

These tests are based on the precedent set in Felix Dias Bandaranayke vs State Films Corporation and apply to all types of injunctions in Sri Lanka. The claimant must prove each of the three conditions listed above.

9.3 Are damages available?

Damages are a key remedy available to a patent owner in Sri Lanka whose rights have been infringed. Under the Intellectual Property Act, when a party proves that its patent rights have been violated, the Commercial High Court has the authority to award compensation for the loss suffered due to the infringement.

9.4 What types of damages are available?

According to Section 170 of the Intellectual Property Act, in cases of patent infringement, the Commercial High Court has the authority to award damages and grant other reliefs it deems just and equitable. The types of damages available include the following:

Compensatory damages: As outlined in Section 170(3)(a)(i), these are assessed based on the monetary value of the loss suffered due to the infringement and aim to compensate the patent owner for the actual financial harm caused by the infringement, such as loss of:
- sales;
- reputation; or
- market position.
Recovery of profits: The Commercial High Court may also require the infringing party to surrender the profits it made from the infringement. This serves as an additional remedy to ensure that the infringer does not benefit financially from its wrongful actions.

The quantum of damages awarded can be influenced by factors such as:

the severity of the infringement;
whether the infringer acted wilfully; and
the extent to which the infringement harmed the patent owner's business or reputation.

Moreover, the court may also consider awarding statutory damages under Section 170(10) of the act, in which the patent owner can opt for a predetermined amount of compensation without the need to prove actual damages. The range for statutory damages is from a minimum of LKR 50,000 to a maximum of LKR 1 million. The exact amount is determined by the court based on:

what it considers to be appropriate and just in the circumstances of the case; and
the evidence provided.

9.5 What is the standard to obtain certain types of injunctions?

Please see question 9.2, which outlines the standard applicable to all forms of injunctions under Sri Lankan law, including:

enjoining orders;
interim injunctions; and
permanent injunctions.

The standard applies regardless of the stage of litigation at which the injunction is sought.

9.6 Is it possible to increase or multiply damages due to a party's actions?

The Intellectual Property Act does not expressly provide for increased or multiplied damages, such as treble damages or punitive damages, in cases of patent infringement.

9.7 Are sanctions available?

Yes. Sanctions are available for patent infringement under Sri Lankan law in the form of fines and imprisonment, as provided in Section 181 of the Intellectual Property Act.

9.8 What kinds of sanctions are available?

Any person that wilfully infringes the rights of a registered owner, assignee or licensee of a patent commits an offence and is liable, upon conviction after a trial before a magistrate, to the following sanctions:

Imprisonment (criminal sanction): Where the infringement involves fraudulent or wilful misconduct, the court may impose a term of imprisonment for a term not exceeding six months, particularly in cases of repeated or aggravated violations.
Fines (criminal sanction): The magistrate may impose monetary penalties not exceeding LKR 500,000 as prescribed under the Intellectual Property Act.
Seizure and destruction of infringing goods: In appropriate cases, the magistrate may order the seizure, forfeiture or destruction of counterfeit or infringing goods, including any materials or implements predominantly used in the creation of such goods, to prevent further infringement.

In the event of a second or subsequent conviction, the fine, term of imprisonment or both may be doubled.

9.9 Can a party obtain attorneys' fees?

Yes. A prevailing party may request the Commercial High Court to direct the losing party to pay attorneys' fees as part of the legal costs. In general, costs follow the event, meaning that the unsuccessful party is typically required to bear the legal costs incurred by the successful party.

9.10 What is the standard to obtain attorneys' fees?

Director-general of intellectual property: In any proceedings handled by the director-general of intellectual property, the director-general has the power to decide who should pay costs and how much should be paid based on what is reasonable to him. Once the director-general makes this decision, it can be submitted to the Commercial High Court, which will treat it just like one of its own orders, meaning that it can be enforced in the same manner as an order of the court.

Commercial High Court: For civil matters, the awarding of costs is governed by Chapter XXI of the Civil Procedure Code. Costs are calculated in accordance with the applicable scale of costs published from time to time. The most recent scale is set out in Extraordinary Gazette 2371/14, dated 13 February 2024. This gazette:

specifies fixed cost values; and
includes charges for:
- drafting;
- filing; and
- court appearances.

Costs awarded are not based on the actual legal fees incurred by a party but are instead limited to the amounts prescribed in the gazette. Further, the award of attorney's fees is subject to the discretion of the court, which may take into account various factors, including:

the conduct of the parties;
the complexity of the case; and
whether the proceedings were unnecessarily prolonged.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

Section 93 of the Intellectual Property Act sets out the default legal position applicable to patent licensing agreements. A licensee may obtain rights to exploit a patent, but unless the licence is expressly exclusive and the contract clearly reserves no rights to the licensor, the licensor retains the right to continue exploiting the patent. This provision underscores the importance of clearly defining the nature and scope of exclusivity in any patent licensing agreement.

10.2 What limits can a patent owner impose on a licence?

The proviso to Section 94 of the Intellectual Property Act permits a patent owner to impose specific limitations within a licence agreement. These may include restrictions on:

the scope, extent or duration of the licensee's exploitation of the patented invention;
the geographical area in which the invention may be exploited; and
the quality or quantity of the products associated with the patented invention.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

There are no specific provisions in the present law limiting patent protection on the basis of antitrust considerations. Sri Lanka does not have a standalone competition statute. However, anti-competitive agreements, abuse of dominance, and restrictive trade practices may be investigated under Sections 34 and 35 of the Consumer Affairs Authority Act, No 9 of 2003, as amended. Where a patent is used to eliminate competition or establish a monopoly, such conduct may be subject to scrutiny under consumer protection laws. Section 34 empowers the Consumer Affairs Authority to initiate investigations, while Section 35 defines the types of anti-competitive practices that may give rise to such investigations. These provisions offer a mechanism to address conduct that undermines fair competition in the Sri Lankan market.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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