questionnaire on exceptions and limitations to patent rights

Intellectual Property Office of Sri Lanka

Section 1 General
Section 2 Private and/or non-commercial use
Section 3 Experimental use and/or scientific research
Section 4 Preparation of medicines
Section 5 Prior use
Section 6 Use of articles on foreign vessels, aircrafts and land vehicles
Section 7 Acts for obtaining regulatory approval from authorities
Section 8 Exhaustion of patent rights
Section 9 Compulsory licensing and/or government use
Section 10 Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
Section 11 Other exceptions and limitations

Section 1: General

1. As background for the exceptions and limitations to patents investigated in this questionnaire, what is the legal standard used to determine whether an invention is patentable? If the standard for patentability includes provisions that vary according to the technology involved, please include examples of how the standard has been interpreted, if available. Please indicate the source of law (statutory and-or case law) by providing the relevant provisions and/or a brief summary of the relevant decisions.

Novelty, inventive step and industrial application (Intellectual Property Act No. 36 of 2003 Section 63)

Correspondingly, please list exclusions from patentability that exist in your law. Furthermore, please provide the source of those exclusions from patentability if different from the source of the standard of patentability, and provide any available case law or interpretive decisions specific to the exclusions.

The following, notwithstanding they are inventions, are not be patentable –
(a) discoveries, scientific theories and mathematical methods ;
(b) plants, animals and microorganisms other than transgenic microorganisms and an essentially biological process for the production of plants and animals other than non-biological and microbiological processes ;
(c) schemes, rules or methods for doing business, performing purely mental acts or playing games;
(d) methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body; provided however, any product used in any such method shall be patentable;
(e) an invention which is useful in the utilization of special nuclear material or atomic energy in an atomic weapon;
(f) any invention, the prevention within Sri Lanka of the commercial exploitation of which is necessary to protect the public order, morality including the protection of human, animal or plant life or health or the avoidance of serious prejudice to the environment. (S. 62(3) of the Intellectual Property Act No. 36 of 2003)

2. As background for the exceptions and limitations to patents investigated in this questionnaire, what exclusive rights are granted with a patent? Please provide the relevant provision in the statutory or case law. In addition, if publication of a patent application accords exclusive rights to the patent applicant, what are those rights?

Rights to use, assign and license the patent/protected technology.
The national patent applications are examined and published where the invention is patentable. Upon publication, any interested party can challenge the proposed grant of patent. If no objection is raised during the prescribed period, the patent is granted.

3. Which exceptions and limitations does the applicable law provide in respect to patent rights (please indicate the applicable exceptions/limitations):

Private and/or non-commercial use;
Experimental use and/or scientific research;
Prior use;
Use of articles on foreign vessels, aircrafts and land vehicles;
Exhaustion of patent rights;
Compulsory licensing and/or government use.

Section 2: Private and/or non-commercial use

4. If the exception is contained in statutory law, please provide the relevant provision(s):

The protected rights extend only to acts done for industrial or commercial purposes and in particular do not extend to acts done only for the purpose of scientific research. (S.86(1)(i) of the Intellectual Property Act No. 36 of 2003)

5. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided]

6.(a) What are the public policy objectives for providing the exception?

Promote creativity while protecting the rights of the patent holder.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

Hanzard (Records of Parliamentary Debates) dated 23.07.2003. The purposes of introduction of the new law in 2003 were the promotion of national creativity, attraction of investment, promotion of trade, protection of consumer interests and integration of the national economy into the knowledge driven global economic environment.

7. If the applicable law defines the concepts “non-commercial”, “commercial” and/or “private”, please provide those definitions by citing legal provision(s) and/or decision(s):

Not defined

8. If there are any other criteria provided in the applicable law to be applied in determining the scope of the exception, please provide those criteria by citing legal provision(s) and/or decision(s):

[Note from the Secretariat: response was not provided]

9. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:

No study done. But, probably due to the existing level of R & D activities in the country, the exception has not been practically tested.

10. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:

No information available.

Section 3: Experimental use and/or scientific research

11. If the exception is contained in statutory law, please provide the relevant provision(s):

12. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided]

13.(a) What are the public policy objectives for providing the exception?

Promote creativity while protecting the rights of the patent holder

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

Hanzard (Records of Parliamentary Debates) dated 23.07.2003. The purposes of introduction of the new law in 2003 were the promotion of national creativity, attraction of investment, promotion of trade, protection of consumer interests and integration of the national economy into the knowledge driven global economic environment.

14. Does the applicable law make a distinction concerning the nature of the organization conducting the experimentation or research (for example, whether the organization is commercial or a not-for-profit entity)? Please explain:

No

15.-17.

[Note from the Secretariat: response was not provided.]

18. If the commercial intention of the experimentation and/or research is relevant to the determination of the scope of the exception, please indicate whether the exception covers activities relating to:

The commercial intention of the experimentation and/or research is not relevant
Not yet interpreted by an authoritative court.

19.-20.

[Note from the Secretariat: response was not provided.]

21. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:

So far no complaints from R & D Institutions to the IP Office.

22. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:

[Note from the Secretariat: response was not provided.]

Section 4: Preparation of medicines

23.-30.

[Note from the Secretariat: the applicable law of Sri Lanka does not provide exceptions related to the preparation of medicines.]

Section 5: Prior use

31. If the exception is contained in statutory law, please provide the relevant provision(s):

Where a person at the filing date or, where applicable, the priority date, of the patent application, was in good faith making the product or using the process in Sri Lanka which is the subject of the invention claimed inn such application or had in good faith made serious preparations in Sri Lanka towards the making of the product or using the process.(S.87(1) of the intellectual Property Act of 2003).

32. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

33.(a) What are the public policy objectives for providing the exception? Please explain:

Promote creativity while protecting the rights of the patent holder.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

Hanzard (Records of Parliamentary Debates) dated 23.07.2003. The purposes of introduction of the new law in 2003 were the promotion of national creativity, attraction of investment, promotion of trade, protection of consumer interests and integration of the national economy into the knowledge driven global economic environment

34. How does the applicable law define the scope of “use”? Does the applicable law provide for any quantitative or qualitative limitations on the application of the “use” by prior user? Please explain your answer by citing legal provision(s) and/or decision(s):

Not so far defined by an authoritative court.

35. Does the applicable law provide for a remuneration to be paid to the patentee for the exercise of the exception? Please explain:

No.

36. According to the applicable law, can a prior user license or assign his prior user’s right to a third party?

Yes

37. In case of affirmative answer to question 36, does the applicable law establish conditions on such licensing or assignment for the continued application of the prior use exception?

Yes

If yes, please explain what those conditions are:

The prior user’s right cannot be assigned or transmitted except as part of the business of the prior user (.(S.87(1) of the intellectual Property Act of 2003).

38. Does this exception apply in situations where a third party has been using the patented invention or has made serious preparations for such use after the invalidation or refusal of the patent, but before the restoration or grant of the patent?

No

If yes, please explain the conditions under which such use can continue to apply:

N/A

39. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):

[Note from the Secretariat: response was not provided.]

40.-41.

Not known.

Section 6: Use of articles on foreign vessels, aircrafts and land vehicles

42. If the exception is contained in statutory law, please provide the relevant provision(s):

The protected rights do not extend to the presence or use of products on foreign vessels, aircraft, spacecraft, or land vehicles which temporarily or accidentally enter the waters, airspace or territory of Sri Lanka. (S.86(1)(iii) of the IP Act of 2003).

43. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

44.(a) What are the public policy objectives for providing the exception? Please explain:

To honor our international obligations

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

45. The exception applies in relation to:

Vessels;
Aircrafts;
Land Vehicles;
Spacecraft.

46. In determining the scope of the exception, does the applicable law apply such terms as ”temporarily” and/or “accidentally” or any other equivalent term in relation to the entry of foreign transportation means into the national territory? Please provide the definitions of those terms by citing legal provision(s) and/or decision(s):

Yes. No definitions available

47. Does the applicable law provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft)? Please explain your answer by citing legal provision(s) and/or decision(s):

No.

48. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):

[Note from the Secretariat: response was not provided.]

49. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:

Not known to the IP Office.

50. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:

[Note from the Secretariat: response was not provided.]

Section 7: Acts for obtaining regulatory approval from authorities

51.-59.

[Note from the Secretariat: the applicable law of Sri Lanka does not provide exceptions related to acts for obtaining regulatory approval from authorities.]

Section 8: Exhaustion of patent rights

60. Please indicate what type of exhaustion doctrine is applicable in your country in relation to patents:

Uncertain. The protected rights do not extend to acts in respect of articles which have been put in the market by the owner of the patent or by a manufacturer under license. ( S.86(1)(iv) of the IP Act). The issue whether these provisions cover both national and international exhaustion needs the interpretation of court.

If the exception is contained in statutory law, please provide the relevant provision(s):

The protected rights do not extend to the acts in respect of articles which have been put in the market by the owner of the patent or by a manufacturer under license. (S. 86 (1)(iv) of the Intellectual Property Act).

If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

61.(a) What are the public policy objectives for adopting the exhaustion regime specified above? Please explain:

Consumer protection.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

Hanzard (Records of Parliamentary Debates) dated 23.07.2003. One of the purposes of the introduction of the new law 2003 was to safeguard consumer interests.

62. Does the applicable law permit the patentee to introduce restrictions on importation or other distribution of the patented product by means of express notice on the product that can override the exhaustion doctrine adopted in the country?

No.

Please explain your answer by citing legal provision(s) and/or decision(s):

[Note from the Secretariat: response was not provided.]

63. Has the applicable exhaustion regime been considered adequate to meet the public policy objectives in your country? Please explain:

Not yet practically tested.

64. Which challenges, if any, have been encountered in relation to the practical implementation of the applicable exhaustion regime in your country? Please explain:

So far not really tested the provisions.

Section 9: Compulsory licensing and/or government use

Compulsory licenses

65. If the exception is contained in statutory law, please provide the relevant provision(s):

Section 86(2) of the Intellectual Property Act

66. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:

[Note from the Secretariat: response was not provided.]

67. What grounds for the grant of a compulsory license does the applicable law provide in respect to patents (please indicate the applicable grounds):

Refusal to grant licenses on reasonable terms;
Anti-competitive practices and/or unfair competition;
Public health;
National security;
National emergency and/or extreme urgency;
Dependent patents.

68.(a) What are the public policy objectives for providing compulsory licenses in your country? Please explain:

Consumer protection

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

Hanzard (Records of Parliamentary Debates) dated 23.07.2003. One of the purposes of the introduction of the new law in 2003 was to safeguard consumer interests.

69. If the applicable law provides for the grant of compulsory licenses on the ground of “non-working” or “insufficient working”, please provide the definitions of those terms by citing legal provision(s) and/or decision(s):

Not so far

70.-72.

[Note from the Secretariat: response was not provided.]

73. If the applicable law provides for the grant of compulsory licenses on the ground of refusal by the patentee to grant licenses on “reasonable terms and conditions” and within a “reasonable period of time”, please provide the definitions given to those terms by citing legal provision(s) and/or decision(s):

Not given by the statute or any case

74. If the applicable law provides for the grant of compulsory licenses on the ground of anti-competitive practices, please indicate which anti-competitive practices relating to patents may lead to the grant of compulsory licenses by citing legal provision(s) and/or decision(s):

Not given specifically

75. If the applicable law provides for the grant of compulsory licenses on the ground of dependent patents, please indicate the conditions that dependent patents must meet for a compulsory license to be granted:

Where the application is for the exploitation of the patent (the second patent) which cannot be exploited without infringing another patent (the first patent), the following conditions shall apply:
- the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;
- the owner of the fist patent shall be entitled to a cross license on reasonable terms to exploit the invention claimed in the second patent; and
- the exploitation authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent. (S. 86(2)(g) of the IP Act).

76. Does the applicable law provide a general policy to be followed in relation to the remuneration to be paid by the beneficiary of the compulsory license to the patentee? Please explain:

[Note from the Secretariat: response was not provided.]

77. If the applicable law provides for the grant of compulsory licenses on the ground of “national emergency” or “circumstances of extreme urgency”, please explain how the applicable law defines those two concepts and their scope of application, and provide examples:

Not explained. It is a matter for the court to decide.

78. Please indicate how many times and in which technological areas compulsory licenses have been issued in your country:

Not yet.

79. Is the applicable legal framework for the issuance of compulsory licenses considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:

Not yet practically tested.

80. Which challenges, if any, have been encountered in relation to the use of the compulsory licensing system provisions in your country? Please explain:

[Note from the Secretariat: response was not provided.]

Government use

81. If the exception is contained in statutory law, please provide the relevant provision(s):

Director-General may grant a compulsory license where he has satisfied himself of the existence of a national emergency or any other circumstances of extreme urgency or in case of public non-commercial use for the purpose such as national security, nutrition, health or for the development of other vital sections of the national economy. (S. 86 (2)(c) of the Intellectual Property Act).

82. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

83. What grounds for the grant of government use does the applicable law provide in respect to patents (please indicate the applicable grounds):

Refusal to grant licenses on reasonable terms;
Anti-competitive practices and/or unfair competition;
Public health;
National security;
National emergency and/or extreme urgency.

84.(a) What are the public policy objectives for providing government use in your country?

Consumer protection

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

Hanzard (Records of Parliamentary Debates) dated 23.07.2003. One of the purposes of the introduction of the new law 2003 was to safeguard consumer interests.

85.-87.

Not so far.

88. Which challenges, if any, have been encountered in relation to the use of the government use mechanism in your country? Please explain:

[Note from the Secretariat: response was not provided.]

Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions

89.-100.

[Note from the Secretariat: the applicable law of Sri Lanka does not provide exceptions and limitations related to farmers’ and/or breeders’ use of patented inventions.]

Section 11: Other exceptions and limitations

101.-103.

[Note from the Secretariat: the applicable law of Sri Lanka does not provide other exceptions and limitations.]

[End of questionnaire]

August 2011