RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/324
20 November 2001
(01-5890)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Sri Lanka to questions posed by Canada and Switzerland
By means of communications from the Permanent Mission of Sri Lanka dated
19 November 2001, the Secretariat has received the following responses to questions posed byCanada and Switzerland, as circulated in documents IP/C/W/314 and 315, respectively.
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CANADA
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS Agreement and
throughout) have been implemented.
(a) The provisions of the Code of Intellectual Property Act No. 52 of 1979, as amended by Acts
Nos. 30 of 1980, 2 of 1983, 17 of 1990, 13 of 1997 and 40 of 2000 and of the proposed amendmentsto the Code of Intellectual Property Act are consistent with Articles 41-61 of the TRIPS Agreement.
Chapter XXX of the Code of Intellectual Property Act provides for offences, penalties and
procedures in respect of infringement of intellectual property rights.  The procedure covers inter alia
the provisions relating to investigation and prosecution including search warrants and orders fordisposal of infringing goods. (particularly Sections 144-157, 163 and 170)
Chapter XXXII of the Code makes provisions with regard to civil remedies and procedure for
infringement of intellectual property rights including injunctions, damages and other just and
appropriate relief as well as appeals. (Section 21 and Sections 174-182)
Section 166 makes provisions for the prohibition of importation of goods in violation of
intellectual property rights.
The provisions of High Court of the Provinces (Special Provisions Act No. 10 of 1996) has
established a special Court with exclusive first instance civil jurisdiction in matters involving
intellectual property.  This Act has also simplified the appellate system by allowing the parties tomake an appeal from the decision of the High Court straight to the Supreme Court – the highest
Appellate Court of the country.  In normal circumst ances, such appeal is made first to the Court of
Appeal and then to the Supreme Court.
(b) Under the proposed amendments to the Code of Intellectual Property Act the provisions
relating to enforcement have been expanded.
The provisions relating to criminal sanctions have been improved mainly by enhancing the
punishment (increasing the original fine Rs.20,000/ - to Rs.500,000/-, the term of imprisonment stands
at six months) and introducing new offences. (Clauses 32 - 41)IP/C/W/324
Page 2
The proposed law has also improved and expanded the provisions relating to the civil
remedies and procedure, including such areas as injunctions, damages, interim measures, right of
information and disposal of infringing goods.  The plaintiff has the right to claim either actual
damages or statutory damages.  The Court may also grant any other just and appropriate relief.(Clauses 49 - 53)
The proposed law expands the existing provisions with regard to broader control.
Accordingly, importation and exportation of any goods in contravention of intellectual property rights
are prohibited.  The Customs Officials are empowered to treat such goods as the goods that are
prohibited goods under Customs Ordinance.  Moreover, the provisions are also available for the
suspension of infringing goods by Customs Authorities. (Clauses 43, 44)
Clause 3 (Section 23) and Clause 17 deal with the infringement of copyright and related rights
and the burden of proof with regard to infringement of process patents.
Similar enforcement provisions are applicable to the infringement of layout-designs of
integrated circuits. (Sections 12 - 16 of the proposed law)
2. What protection does your Copyright legi slation afford to "foreign works"?
 The works of nationals of Sri Lanka and those of the nationals of other Members receive
equal protection.
(a) The protected works include all the works which, by virtue of the Treaties entered
into by Sri Lanka, must be protected. (Section 22 of the Code)
(b) The existing provisions have been recast under the proposed amendments covering
the works that must be protected in Sri Lanka by virtue of, and in accordance with,
any international convention or other international agreement to which Sri Lanka is aparty. (Clause 3, Section 24c)
SWITZERLAND
A. T
RADEMARKS
1. Please explain how your legislation implements  Article 62.2 of the TRIPS Agreement.  Please
indicate how long it takes on average to register a trademark.  Please cite the relevant provisions of
your law.
The Code of Intellectual Property Act No. 52 of 1979, as amended by Acts Nos. 30 of 1980, 2
of 1983, 17 of 1990, 13 of 1997 and 40 of 2000, have made provisions for granting or registering the
rights within a reasonable period of time so as to avoid unwarranted curtailment of the period of
protection. (Sections 106 and 107)
The registration process of a mark involves activities such as examination of the application
with regard to formal requirements, examination of the mark with regard to its admissibility under the
law, publication of the mark and opposition enquiries. (Sections 106 and 107)
The date of application for registration is considered to be the date of registration, if the mark
is registered. (Section 114)IP/C/W/324
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It may take on average 9 to 12 months to register a trademark.
B. PATENTS
2. Does your legislation grant patent protection for inventions relating to products and
processes in all fields of technology?  Are there any exceptions?  If so, please explain what theseexceptions are and how they comply with Article 27 of the TRIPS Agreement.
Patents are granted for inventions relating to products and processes in all fields of
technology.  (Sections 59 and 60)  There are exceptions:
(a) discoveries, scientific theories and mathematical methods;
(b) plant or animal varieties or essentially biological processes for the production of
plants or animals, other than micro-biological processes and the products of such
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 practised on the human or animal body;
Provided, however, that this paragraph shall not apply to the products used in any
such methods.  (Section 59(3)).
These exceptions fully comply with Article 27.3 of the TRIPS Agreement.
Under the proposed law, the following are also not patentable:
(a) An invention which is useful in the utilization of special nuclear material or atomic
energy in an atomic weapon;
(b) 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 ofhuman, animal or plant life or health or the avoidance of serious prejudice to the
environment.
These exceptions also comply with Article 27.2 of the TRIPS Agreement.
3. Does your legislation, in accordance with Article 27.1 in combination with Article 31 of the
TRIPS Agreement, consider impor tation as "working" a patent (and therefore preclude compulsory
licensing, if a product is being imported)?
The Sri Lankan law does not provide for compulsory licences and therefore this question does
not arise.  The owner of a patent has the exclusive right, inter alia , to exploit the patented invention.
The phrase "exploitation" means any of the following acts in relation to a patent:
(a) when the patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling and using the product;
(ii) stocking such product for the purpose of offering for sale, selling or using;IP/C/W/324
Page 4
(b) when the patent has been granted in respect of a process:
(i) using the process;
(ii) doing any of the acts referred to in paragraph (a) in respect of a product
obtained directly by means of the process.  (Section 81)
4. Does your legislation make the granting of a compulsory license subject to all the conditions
enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant provisions of law.
Sri Lankan law does not provide for compulsory licences.
5. Please indicate the term of protection granted to patents according to your law?
As the law stands today, the term of protection of a patent is 15 years after the date of grant.
(Section 80)
Under the proposed law, a patent is protected for a term of 20 years after the date of
application for its registration.
6. Does your legislation provide for the principle of the reversal of burden of proof in a process
patent litigation?  Please cite the relevant provisions of law.
Under the proposed law, the required provisions have been made. (Clause 17, Section 81(A))
C. PROTECTION OF UNDISCLOSED INFORMATION
7. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market authorisation of
a pharmaceutical or of an agricultural chemical product is protected against disclosure and against
unfair commercial use by a competitor, for example by prohibiting a second applicant from relying
on, or from referring to the original data of the first applicant, when applying subsequently for market
authorisation for a similar product.  Does your legislation provide for exceptions to this? If yes, under
what conditions would such exceptions apply?  Does your legislation set a specific term of protection
for undisclosed test or other data of the first applicant?
Under the proposed law, the required safeguards are offered under the law of unfair
competition.  The proposed Section 142(6)(d) provides as follows:
"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:
(i) 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 oragricultural or chemical products which utilize new chemical entities; or
(ii) 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."
Thus such tests and data will be protected against unfair commercial use and disclosure as
required by Article 39.3 of the TRIPS Agreement.IP/C/W/324
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The law of unfair competition, which includes the protection of undisclosed information, does
not establish time limits for the protection of such information.
These provisions will meet the two specific obligations established under Article 39.3 of the
TRIPS Agreement, namely:
(a) to protect such data against unfair commercial use; and(b) to protect such data against disclosure.The TRIPS Agreement does not impose any obligation to prevent anybody from obtaining
market approval for products identical or similar to those already approved.  Nor does it create anyobligation to grant any period of exclusivity in favour of a previous applicant for marketing approval.
The competent authority may grant marketing approv al to any applicant for his own version of a
previously approved pharmaceutical or agricultural chemical product provided he complies with the
relevant legal provisions.  All applicants will be treated equally.  The competent authority may use, in
his internal approval process, the information available to him regardless of its origin.  Such use ofinformation does not constitute an act of commercial use or disclosure.  The subsequent applicants
will not have access to the data submitted by the first or previous applicants.  Such data will not be
disclosed to the subsequent applicants.
D. 
ENFORCEMENT
8. Please indicate remedies provided by your legislation, which constitute effective deterrents to
infringements of intellectual property rights.
Criminal sanctions
The infringement of any of the rights protected under the law is an offence.  The offender can
be punished on conviction with an imprisonment for a period not exceeding six months and a fine not
exceeding Rs.20,000/- or both.  In the case of second or subsequent conviction the punishment can be
doubled. (Sections 144-156)
Civil remedies
Upon the establishment of actual or imminent infringement of any of the protected rights, the
Courts are empowered to:
(a) grant injunctions;
(b) award damages; and
(c) grant any other just and appropriate remedies. (Section 179)
Border measures
The importation of any good in violation of rights relating to trademarks and trade names is
prohibited. (Section 166)
9. Please describe any new initiatives that are planned to improve enforcement of intellectual
property rights in your country, particularly initiatives related to criminal enforcement.IP/C/W/324
Page 6
Criminal sanctions
(a) The punishment has been enhanced under the proposed law by increasing the fine
from Rs.20,000/- to Rs.500,000/-.
(b) Under the proposed law, certain new offences have been introduced.  For example, a
person who has in his possession any infringing copy of any copyright work for
purposes of trade commits a punishable offence. (Clause 32, Section 144)
(c) The provisions of the Code of Criminal Procedure Act will be made applicable to
offences relating to the infringement of inte llectual property making particularly the
investigation process more efficient and effective.
Civil remedies
The proposed law has introduced several new measures to ensure effective enforcement of
intellectual property rights.  For example, the plaintiff may claim, instead of actual damages, an awardof statutory damages. (Section 179)  The Special Court set up for civil litigation in intellectual
property will be established in all Provinces of Sri Lanka for the purpose of cost effective and time
saving litigation.
Border measures
A set of comprehensive provisions has been proposed with regard to broader measures in line
with the TRIPS Agreement. (Clause 43, Sections 166 and 166A)
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