RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/324/Add.2
29 November 2001
(01-6101)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Sri Lanka to questions posed by
the European Communities and their member States
Addendum
By means of a communication from the Permanent Mission of Sri Lanka dated
26 November 2001, the Secretariat has received the following responses to questions posed by the
European Communities and their member States, as circulated in document IP/C/W/320.
_______________
Note: Intellectual property law in Sri Lanka is governed by the Code of Intellectual Property Act
No. 52 of 1979 (as amended) (referred to herein as the "Code").  Amendments are proposed to the
Code in line with the TRIPS Agreement (referre d to herein as the "proposed law").  These
amendments will be placed before Parliament soon.
A. GENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health and
nutrition, and to promote the public interest in se ctors of vital importance to your socio-economic and
technological development as mentioned under Arti cle 8 TRIPs.  If yes, please explain how such
measures are consistent with the provisions of the TRIPs Agreement.
The law does not make any express provision with regard to the matters referred to in
Article 8 of the TRIPS Agreement.
B. COPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of authors
in relation to their literary and artistic works, as specified in Article 9 of TRIPs which requires
Members to comply with Articles 1-21 of the Berne Convention and the Appendix to the BerneConvention (1971).
Section 7 of the present law protects all original literary, artistic and scientific works.  The
similar provisions are made in the proposed law under Section 7 in line with Article 9 of the TRIPS
Agreement.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.IP/C/W/324/Add.2
Page 2
Computer programs are protected as literary works (Section 7).  Collections of work are
protected as derivative works (Section 8).  Sections 7 and 8 of the proposed law makes provisions for
the protection of computer programs as literary works and collection of works and databases
respectively.
4. Please state whether your legislation provides for a rental right and, if so, the works to which
it applies.
The proposed law makes the following provisions:10(1)(d) - the public distribution of the original and each copy of the work by sale, rental or
otherwise.
(e) - rental of the original or a copy of a audio visual work, a work embodied in a sound
recording, computer program, a database or a musical work in the form of notation,
irrespective of the ownership of the original or copy concerned.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organizations under your legislation.
The proposed law provides for the following rights.
Performers
• The broadcasting or other communication to the public of his performance.
• The fixation of his unfixed performance.
• The reproduction of a fixation of his performance.
Producers of sound recordings
• Direct or indirect reproduction of the sound recording.
• Importation of copies of the sound recording even where such imported copies were
made with the authorization of the producer.
• Adaptation or other transformation of the sound recording.
• Rental of a copy of the sound recording irrespective of the ownership of the copy
rented.
Broadcasting Organisations.
• The use by a physical person exclusively for his own personal purposes.
• Using short excerpts for reporting current events to the extent justified by the purpose
of providing current information.
• Use solely for the purpose of face to face teaching activities or for scientific research.
• Cases where, under copyright, a work can be used without the authorization of the
author or other owner of copyright.IP/C/W/324/Add.2
Page 3
6. Please state whether your legislation provides for any limitation or exception in relation to
each of the rights described above in accordance with the relevant provisions of the Berne and Rome
Conventions and in light of Articles 13 and 14.6 of the TRIPS Agreement.
Copyright
• Fair use.
• Related rights.
• The use by a physical person exclusively for his own personal purposes.
• Using short excerpts for reporting current events to extend justified by the purpose of
providing current information.
• Use solely for the purpose of face to face teaching activities or for scientific research.
• Cases where, under copyright, a work can be used without the authorization of author
or other owner of copyright.
7. Please state the terms of protection of each right described above and the work or subject
matter to which it applies.
Copyright
During the lifetime of the author and 50 years after his death.
Related rights
The performers' rights are protected from the moment in which the performance takes place
until the end of the 50th calendar year following the year in which the performance takes place.
Rights of the producers of sound recording are protected from the publication of sound
recording until the end of the 50th calendar year following the year of publication or, if the sound
recording has not been published, from the fixation of the sound recording until the end of the 50th
calendar year following the year of fixation.
The rights of the Broadcasting Organization are protected from the moment when  the
broadcasting takes place until the end of the 50th calendar year following the year in which broadcasts
takes place.
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
The proposed law contains the following provision (Clause 56):"Amendment to Part II of the principal enactment shall be deemed for all purposes to have
come into operation on the date on which the principal enactment came into operationprovided that the term of protection had not expired under the principal enactment or under
the legislation of the country of origin of such works, performances, sound recordings or
broadcasts that are to be protected under an international treaty to which Sri Lanka is a party."IP/C/W/324/Add.2
Page 4
9. Please explain whether the droit de suite provided for in Article 14ter of the Berne
Convention is protected in your legislation.
No.
C. TRADEMARKS
10. Please give the definition of a sign under your national legislation and explain under what
conditions it is protectable.
The law does not define "a sign".  However, trademark means a visible sign serving to
distinguish goods of one enterprise from those of other enterprises whereas service mark means anyvisible sign serving to distinguish the services of one enterprise from those of other enterprises.
A sign which is admitted as a trademark or service mark can be protected under the
conditions applicable to trademarks and service marks.
11. Please confirm whether or not services are a protectable subject matter in your trademark
law.  Please confirm if signs, such as trade names, are protectable.  Please describe if elements such
as sound, perfumes and containers are protectable.
Services are protectable.  Trade names are protectable.  Containers are protectable but not
sound and perfumes.
12. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a registration
in that respect.
Use is not required.
13. Please confirm whether or not your legislati on permits that the registration of trademarks be
indefinitely renewable.
The registration of a trademark is indefinitely renewable.
14. Please describe the special requirements, if any, prescribed by your legislation concerning
the use of a trademark.
If the registered owner of a mark has, wit hout valid grounds fails to use the mark within
Sri Lanka or cause it to be used within Sri Lanka by virtue of a licence for a period of five years the
Court may on an application of any interested person may order the removal of the mark.
D. G
EOGRAPHICAL INDICATIONS 
15. Please explain whether or not your trademark registration authority refuses a trademark
application if it contains a geographical indication.
A geographical indication cannot be registered as a trademark if it is likely to mislead the
trade circles or the public as to the nature, the source, the manufacturing process or the characteristics
of the goods or services concerned. (Section 99 (1) (f) ).
16. Please give the definition of a geographical indication in your legislation.IP/C/W/324/Add.2
Page 5
"'Geographical indication' means an indication which identifies a good, as originating in the
territory of a country, or a region or locality in that territory, where a given quality, reputation of other
characteristic of the goods, is essentially attributable to its geographical origin." (proposed law)
17. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin .
The definition of the geographical indication.
18. Please describe how additional protection is granted by your legislation to wines and spirits.
Please mention other types of products, if any, covered by this additional protection.
Section 99 (1) (f) provides that a mark which is likely to mislead the trade circles or the
public as to the nature, the source, the manufacturing processes and the characteristics of the goods is
not registrable.
Section 142 (A) of the proposed law makes specific provisions with regard to wines and
spirits.
Other types of products are not so specifically mentioned.
19. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in your
jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of names
considered as generic in your jurisdiction.
The law does not specifically make any general exception.  However, for example,
Section 118 of the law provides that the registration of the mark shall not confer on its registeredowner the right to preclude third parties:
"from using bona fide their names, addresses, pseudonyms, a geographical name, or exact
indications concerning the kind, quality, quantity, destination, value, place of origin or time of
production or of supply of their goods and services, in so far as such use is confined to the
purposes of mere identification or information and cannot mislead the public as to the source
of the goods or services;"
E. I
NDUSTRIAL DESIGNS
20. Please explain whether or not your legislation extends to the protection of designs dictated
essentially by technical or functional considerations.  Please explain how textile designs are
protected.
The law does not protect anything in an industrial design which serves only to obtain a
technical result.
The textile designs are protected like any other design if it is new and it is not scandalous or
contrary to morality or public order or is not likely to offend religious or racial susceptibility of any
community.
21. Please explain how your legislation protects right holders of a design against importing of
articles bearing embodied or copied design.
Section 44 of the Code grants the exclusive rights to the registered owner including to import,
offer or sale, sell or use a product embodying such industrial design.IP/C/W/324/Add.2
Page 6
22. Please state whether or not your legislati on provides for the right to issue a compulsory
licence for industrial designs.
Does not provide.
23. Please indicate for what period of time y our legislation grants protection for industrial
designs.
Fifteen years.
F. PATENTS
24. Please describe how your legislation defines the notions of novelty, inventiveness and
industrial application.
Novelty
(i)    An invention is new if it is not anticipated by prior art.(ii)    Prior art shall consist of –
everything disclosed to the public, anywhere in the world, by written publication or,
in Sri Lanka, by oral disclosure, by use or in any other way, prior to the filing or,where appropriate, priority date of the patent application claiming the invention;
the contents of a domestic patent application having an earlier filing or, where
appropriate, priority date than the patent application referred to in paragraph (a), to
the extent that such contents are included in the patent granted on the basis of the saiddomestic patent application.
(iii)   A disclosure made under subsection (2) (a) shall be disregarded-
if such disclosure occurred within one year preceding the date of the patent
application and if such disclosure was by reason or in consequence of acts committed
by the applicant or his predecessor in title;
if such disclosure occurred within six months preceding the date of the patent
application and if such disclosure was by reason or in consequence of any abuse of
the rights of the applicant or his predecessor in title.
Inventiveness
An invention shall be considered as involving an  inventive step if, having regard to the prior
art relevant to the patent application claiming th e invention, such inventive step would not have been
obvious to a person having ordinary skill in the art.
Industrial application
An invention shall be considered industrially applicable if it can be made  or used in any kind
of industry.
25. Please explain whether or not in your legisl ation, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions are provided for, please describe in detail how these
exclusions are applied in legal as well as practical terms.IP/C/W/324/Add.2
Page 7
The patent rights:
• extend only to acts done for industrial or commercial purposes and in particular not to
acts done only for scientific research;
• not preclude a person having the rights referred to in Section 83 or a licensee from
exploiting the patented invention;
• 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 orterritory of Sri Lanka.
26. Please explain whether your legislation provides for the exclusion of inventions from
patentability based on ordre public or morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
Under the proposed law any invention, the prevention within Sri Lanka of the commercial
exploitation of which is necessary to protect the public order, or morality including the protection of
human, animal or plant life or health or the avoidance of serious prejudice to the environment is notpatentable.
27. Please explain whether or not diagnostic, therapeutic and surgical methods are excluded
from patentability in your legislation.  If so, please explain the relevant section of your legislation and
explain its formulation.
Section 59 (3) (d) provides that method for the treatment of the human or animal body by
surgery or therapy, and diagnostic method practised on human or animal body are not patentable.
28. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
Section 59 (3) (b) provides that plants or animal varieties or essentially biological processes
for the production of plant or animals, other than micro biological processes and the product of suchprocesses are not patentable.
29. Please describe how micro-organisms, non-essentially biological processes, microbiological
processes and plant varieties are protected in your legislation.  Please explain, in this respect, the
relevant sections of your legislation.
Please see the answer to question no. 28.A law is being prepared to protect plant varieties under a sui generis  system.
30. Please explain how your legislation protects patent right holders against the importing and
against the offering for sale of a patented invention.
Section 81 provides as follows:When the patent has been granted in respect of a product-
• making, importing, offering for sale, selling and using the product;IP/C/W/324/Add.2
Page 8
• stocking such product for the purpose of offering for sale, selling or using.
When the patent has been granted in respect of a process-
• using the process;
• doing any of the acts referred to in paragraph (a), in respect of a product obtained
directly by means of the process.
31. Please state if your legislation provides fo r patent product protection of pharmaceutical and
agricultural chemical products.  In the affirmative, please indicate the legal reference.
Yes.  Section 59.
32.  Please clarify if the patent protection of a process, as provided for in your legislation, covers
the product obtained directly by that process.
Yes.  Section 81.
33. Please explain the additional conditions, if any, in your legislation other than the sufficient
disclosure of the invention in Article 29 of the TR IPS Agreement (e.g. submission of justification for
access to genetic material or prior inform consent to its use).  If such additional conditions exist,
please point out the relevant legislation and describe the additional conditions in detail.
No additional conditions.
34. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a parent.  If affirmative, please make a reference to relevant legislation.
The patent rights:
• extend only to acts done for industrial or commercial purposes and in particular not to
acts done only for scientific research;
• not preclude a person having the rights referred to in Section 83 or a licensee from
exploiting the patented invention ;
• 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.
35. Please explain whether or not your legislation provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.  In
particular, please explain how your national le gislation considers individual merits in the
authorization of such use.
Does not provide.
36. Please explain how your legislation explicitly ensures that a proposed user has made efforts
to obtain authorization from the right holder on reasonable commercial terms and conditions and that
such efforts have not been successful within a reasonable period of time.  In this context, how do you
define "reasonable period of time".  Please also explain how your legislation ensures that the use of aIP/C/W/324/Add.2
Page 9
compulsory licence shall be authorized predominantly for the supply to the domestic market of the
Member authorizing such use.
Not applicable.
37. Please state if your legislation grants additional protection for innovations after the 20 years
of patent protection has lapsed.
No.
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
The proposed amendment (Section 81 (A) ) provides as follows:"Where the subject matter of a patent is a process for obtaining a product, the burden of proof
in a civil action of establishing that an alleged infringing product was not obtained by thatpatented process shall be on the alleged infringer-
- if the product obtained by the patented process is new; or- if a substantial likelihood exists that the product was made by the patented process
and the patent owner has been unable through reasonable efforts to determine the
process actually used.
In the gathering and evaluation of evidence the legitimate interests of the alleged infringer in
protecting his undisclosed information shall be taken into account".
G. L
AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects topographies.
A law is proposed to protect lay out designs of integrated circuits under a sui generis  system
in line with the TRIPS Agreement. 
40. Please explain what protection your national legislation grants to right holders against the
unlawful importation, sale or distribution for commercial purposes of topographies including
integrated circuits or other articles in which a topography is incorporated in accordance with
Article 36 of the TRIPS Agreement.
The registered owner is given exclusive right to import, offer for sale, sell or otherwise
distribute for commercial purposes the protected lay out design or integrated circuits in which the
protected lay out design is incorporated or an article incorporating such an integrated circuit in so far
as it does not contain an unlawfully reproduced lay out designs.
41. Please explain how your legislation provides for the derogation from Article 36 as specified
in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable grounds to
know when acquiring an integrated circuit or an article incorporating such an integrated circuit that
it contains an unlawful topography.
Section 4 (2) (iv) of the proposed law provides as follows:
The performance of any act referred to in paragraph (ii) of subsection (1) in respect of an
integrated circuit incorporating an unlawfully reproduced layout-design or any articleIP/C/W/324/Add.2
Page 10
incorporating such an integrated circuit, where the person performing or ordering such an act
unknowingly performs or orders such an act and has no reasonable grounds to know, when
acquiring the integrated circuit or the article in corporating such an integrated circuit, that it
incorporated an unlawfully reproduced layout design.
Provided however, where the person performing or ordering any act under this paragraph, is
notified that such layout design is an unlawful reproduction, then such person may, perform
or order any act only with respect to the stock in hand or ordered before he was so notified
and shall be liable to pay to the right holder a sum equivalent to a reasonable royalty such as
would be payable under a freely negotiated licence in respect of such layout design.
42. Please state the term of protection granted by your legislation to topographies.
Ten years from the date of commencement of the protection.
H. PROTECTION OF UNDISCLOSED INFORMATION
43. Please explain whether or not your legislation grants a defined period of time for the
protection of undisclosed information.  If so, please give the time span.
No.
44. Please explain how your legislation defines "undisclosed information".
Information is considered undisclosed information if:(i) it is not, as a body or in the precise configuration and assembly of its components,
generally known among, or readily accessible to, persons within the circles thatnormally deal with the kind of information in question;
(ii) it has actual or potential commercial value because it is secret; and(iii) it has been subject to reasonable steps under the circumstances by the rightful holder
to keep it secret.
The undisclosed information includes (proposed law):
(i) Technical information related to manufacture of goods or the provision of services or
business information which includes internal information which an enterprise has
developed so as to be used within the enterprise.
(ii) Business information which includes the internal information which an enterprise has
developed so as to be used within the enterprise.
45. Please explain how your legislation defines data submitted to governments or governmental
agencies.
(a) No such definition is given.(b) The proposed law provides:Any act or practice, in the course of industrial or commercial activities, shall be considered an
act of unfair competition if it consists or results in-IP/C/W/324/Add.2
Page 11
- an unfair commercial use of secret test or other data, the origination of which
involves considerable effort and which have been submitted to a competent authority
for the purposes of obtaining approval, of the marketing of pharmaceutical or
agricultural or chemical products which utilize new chemical entities; or
- the disclosure of such data, except where necessary to protect the public, or unless
steps have been taken to ensure that the data is protected against unfair commercial
use.
I. ENFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
(a) The current law provides for civil remedies including provisional measures, criminal
sanctions and broader measures.
(b) These provisions will be expanded and strengthened under the proposed law.
47. Please explain whether or not your legislati on provides for a mechanism to appeal to judicial
bodies of final administrative decisions.
The appeals are available under Section 182.
48. Please describe how your legislation authorizes judges to order production of evidence by the
opposing party.  Please give precise information on what measures are taken to ensure the protection
of confidential information.
Under the law of civil procedure the Judges have authority in general to order production of
evidence by opposing parties.
The provisions of Section 179 (4) of the proposed law makes special provisions with regard to
intellectual property.
49. Please quote provisions of your legislati on that authorize judges to order a defendant to
desist from an infringement.
Sections 23 and 179.
50. Please quote what provisions of your legislation authorize judges to order the payment to the
right holder of adequate damages to compensate the injury he suffered.
Sections 23 and 179 of the Code and Section 179 of the proposed law.
51. Please quote what provisions of your legislat ion authorize judges to order the payment of the
right holder's expenses by the infringer.
Civil Procedure Code and Sections 164 and 179 of the Code of Intellectual Property Act.
52. Please explain if and how judges have the author ity to order that infringing goods are placed
outside channels of commerce or destroyed.
The judges are empowered to make appropriate orders under Section 163 (3) and 179 of the
Code and Section 179 (3) (b) of the proposed law.IP/C/W/324/Add.2
Page 12
53. Please quote what provisions of your legislation authorize judges to indemnify a defendant in
the event of abuse by the plaintiff.
Section 179 of the Code and Civil Procedure Code.
54. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
Section 179 of the Code and the law of injunc tion governed by Judicature Act No. 2 of 1978,
Civil Procedure Code and Law of Equity.
55. Please identify the competent authorities in your jurisdiction who receive requests from right
holders for an application to suspend the release of counterfeit goods by the customs authorities.
Customs and Judiciary.
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
Yes.
57. Please indicate whether or not your legislat ion provides for a de minimis  imports exception.
Does not provide in general, but under Section 13 (8) of the proposed law the importation of
a copy of a protected work by a physical person for his own personal purposes is permitted.
58. Please explain how your legislation impl ements Article 61 of the TRIPS Agreement.
Part VI of the Code provides for criminal sanctions and related matters.  Similar provisions
are also available in the proposed law. (the proposed laws to amend the Code of Intellectual Property
Act and for the Protection of Layout Designs).
__________