INTELLECTUAL PROPERTY ACT, No. 36 OF 2003

Regulations made by the Minister of Trade, Commerce, Consumer Affairs and Marketing Development under Section 204 of the Intellectual Property, Act No. 36 of 2003.

JEYARAJ FERNANDOPULLE, Minister of Trade, Commerce, Consumer Affairs and Marketing Development.

15th of May 2006, Ministry of Trade, Commerce, Consumer Affairs and Marketing Development, Colombo.

1. These regulations may be cited as the Intellectual Property Regulations No. 01 of 2006 and shall come into operation on 17th May, 2006

Part I

INDUSTRIAL DESIGNS

2.(1) The application for assignment referred to in subsection (1) of Section 33 of the Act shall be in writing and shall contain a request for assignment, the name and address of the applicant for assignment, the number of the application for the registration of the industrial design concerned or of the registered industrial design, name and address of the applicant of the application for registration of such industrial design or of the registered owner of such industrial design and a clear statement of facts and evidence to substantiate the claim with the fee specified in the second schedule hereto.

(2) The counter statement referred to in sub section (3) of Section 33 of the Act shall be made in writing with a clear statement of facts and evidence to substantiate the claim with the fee specified in the second schedule hereto.

( 3) The application for the registration of an industrial design under Section 36 of the Act shall be substantially set out in the Form D 01 of the first Schedule hereto signed by the applicant or his duly appointed Agent together with the fee specified in the second schedule hereto.

(4) The application shall be accompanied in respect of each industrial design by the following in triplicate.

1 A

(a)

If the industrial design is two-dimensional, by one photographic or graphic representation or one drawing or tracing ;

(b)

If the industrial design is three dimensional, by two photographic or graphic representations or two drawings or tracings, each showing a different aspect of the industrial design ;

(c)

No photographic or graphic representation, drawing or tracing of the industrial design shall exceed 10 centimeters X 15 centimeters. Where there are more than one of such representation, drawing or tracing, they shall be affixed on one sheet of paper of A4 size. Photographic and graphic representations may be in Colour. Drawings and tracing shall be in black.

(d)

An amendment to the application for registration made under this Act may be permitted only in respect of change of name or address of the applicant provided there is no change of the name or address of the applicant by assignment, transmission or otherwise.

1. An indication of the kind of product for which the industrial design is to be used shall be specified in the application together with the class of the Classification given in the Third Schedule hereto.
2. The date of the application shall be the date of its receipt in the National Intellectual Property Office (hereinafter referred to as ‘the office’) provided that, where the fee in respect of such application is received on a date later than the date of receipt of the application then that later date shall be deemed to be the date of the application.
3. Where the earlier application referred to in the declaration claiming priority is in a language other than the language of the application for the registration of the industrial design in Sri Lanka, the Director-General may require the applicant to furnish him within three months from the date of receipt of his letter with a translation of the said earlier application in the language of the application for the registration of the industrial design in Sri Lanka certified as correct by a sworn translator.

6.(1) The notice of opposition referred to in sub Section (9) of the Section 40 of the Act shall be substantially set out in the form D 02 of the first schedule hereto with the fee specified in the second schedule hereto and shall be signed by the person who considers that the industrial design should not be registered or his duly appointed agent.

(2) At any hearing the evidence shall, unless otherwise directed by the Director General, be in the form of an affidavit and after submission of evidence the parties shall file the written submissions, if any, simultaneously on a date given by the Director General.

7. In addition to the particulars specified in sub Section (2) of Section 42 of the Act the following particulars shall also be recorded in respect of each registered industrial design.

(a)

the name and address of any duly appointed agent ;

(b)

the reference to the date and number of the Gazette in which the registration was published ;

(c)

any change in the address of the registered owner or the agent.

1. The publication of each registered industrial design in the Gazette by virtue of Section 44 of the Act shall be substantially set out in the form D 03 of the first Schedule hereto.
2. (1) The registration of an industrial design may be renewed by the Director-General upon receipt of an application substantially set out in the form D 04 of the first schedule hereto of the registered owner or his duly appointed agent and on payment of the fee specified in the Second Schedule hereto.

(2) Every renewal of the registration of an industrial design shall be published in the Gazette substantially set out in the form D 05 of the first Schedule hereto.

10. (1) Any application under Section 49 of the Act made to the Director-General requesting him to record in the Register of Industrial Designs the assignment or transmission of an application for registration, or the registration, of any industrial design, shall be substantially set out in the form D 06 of the First Schedule hereto. Such application shall be signed by the assignee or transferee or his duly appointed agent and shall be forwarded to the Director-General together with the fee specified in the Second Schedule hereto.

(2)

Where the provisions of paragraph (1) of this regulations have been complied with the Director-General shall record such assignment or transmission in the Register of Industrial Designs.

(3)

The provisions of paragraphs (1) and (2) of this regulation shall apply mutatis muntandis to the registration of licence contracts under Section 52 of the Act.

Part II

MARKS

11. The application for the registration of a mark under Section 106 of the Act or a collective mark under Section 138 of the Act or a certification mark under Section 142 of the Act shall be substantially set out in the Form M 01 of the first Schedule hereto together with the fee specified in the Second Schedule hereto. Such application shall be signed by the applicant or his duly appointed agent and in the case of a collective mark or certification mark the application shall accompany the conditions governing the collective mark or certification mark in terms of sections 139 and 142 of the Act.

12.(1) Where the mark consists of letters, words, numerals or punctuation signs and no special graphic features are claimed, the said elements may be reproduced by a means of equipment such as typewriter or computer in the appropriate space provided in the form. One copy of the representation of any other two-dimensional mark shall be affixed to the appropriate space provided in the form.

(2) Where the mark consists of words other than Sinhala, Tamil or English, a translation of such words into English shall accompany the application. The translation shall be certified as correct by a sworn translator.

13. Where the particular mark is three-dimensional, the application shall contain an indication to that effect and the representation shall comprise at least two aspects of the mark sufficient to illustrate the shape and features of the mark. A copy of the representation shall be affixed to the appropriate space provided in the form.

14.(1) Where the copy of the representation to be affixed to the appropriate space provided in the form is larger than that space, it may be affixed on a separate sheet of paper of A4 size and appended to the form.

(2) The representation of a mark shall not exceed 10 centimeters by 10 centimeters.

15. The following amendments to the application for registration may be permitted.

(1)

Change of name or address of the applicant provided there is no change of the name or address of the applicant by assignment, transmission or otherwise, and

(2)

Amendment of the mark subsequently by deleting a part or parts of the mark.

16. The application for registration of a mark may relate to goods or services of any one class of the international Classification set out in the fourth Schedule hereto. 12 – G 007022

17. The date of the application shall be the date of its receipt in the office, provided where the fee in respect, however, of such application is received on a date later than the date of receipt of the application, then that later date shall be deemed to be the date of the application.

18.(1) Where the earlier application referred to in the declaration claiming priority is in a language other than the language of the application for the registration of the mark in Sri Lanka, the Director General may require the applicant to furnish him, within three months from the date of receipt of the application, with a translation of the earlier application in the language of the application for the registration of such mark in Sri Lanka certified as correct by a sworn translator.

(2) Where the certificate referred to in Section 108 of the Act is in a language other than the language of the application, the Director General may require the applicant to furnish him, within three months from the date of receipt of the application with a translation of that certificate in the language of the application certified as correct by a sworn translator.

19. The publication fee referred to in sub Section (7) of Section 111 of the Act shall be paid within a period of two months from the date of the notice of the Director General.

20.(1) Any notice of opposition referred to in sub Section (10) of Section 111 of the Act shall be substantially set out in the Form M 02 of the first Schedule hereto and shall be signed by the opposing party or his duly appointed agent and with the fee specified in the second schedule hereto.

(2) At any hearing the evidence shall, unless otherwise directed by the Director General, be given in form of an affidavit and after such evidence the parties shall file the written submissions, if any, simultaneously on a date by the Director General.

1. Any notice of non completion of registration referred to in Section 112 of the Act shall be substantially set out in the Form M 03 of the first Schedule hereto. The time specified in the notice for the completion of the registration shall be three months from the date of issue of such notice.
2. The Director General shall not register any mark which bears the terms or words such as “President”, “Prime Minister”, “Minister”, “State”, “Government” or any other word or term of similar meaning which is likely to mislead the public into believing that such mark has state patronage or authorization.
1. In addition to the particulars specified in sub section (2) of Section 113 of the Act the following particulars shall be recorded in the Register of Marks in respect of each registered mark :
1. the name and address of any duly appointed agent of the owner of the registered mark ;
2. the reference to the date and number of the Gazette in which the registration was published ; or reference to the medium so published in a manner adequate enough to give the public due notice.
3. any change in the name or the address of the registered owner.
3. The publication of every registered mark shall be substantially set out in the Form M 04 of the first Schedule hereto.
4. The registration of a mark may be renewed by the Director General upon an application made substantially set out in the Form M 05 of the first Schedule hereto with the fee specified in the second schedule hereto in that behalf by the registered owner or his duly appointed agent.
5. Every such renewal shall be published in the Gazette substantially set out in the Form M 06 of the first Schedule hereto.

1. Any application under Section 120 of the Act shall be substantially set out in the in Form M 07 of the first Schedule hereto. It shall be signed by the applicant or his duly appointed Agent and be accompanied with the fee specified in the second schedule hereto.
2. Where the Director General grants leave to add to or to alter, the publication referred to in Section 120 of the Act shall include a representation of the mark as added to or altered, the registration number, the name and address of the registered owner, the date of the registration, the date of the grant of the said leave and the list of the goods or services in respect of which the mark has been registered with an indication of the corresponding class.

29.(1) Any application under Section 123 of the Act to the Director General requesting him to record in the Register of Marks the assignment or transmission of an application for registration, or the registration of a mark shall be substantially set out in the Form M 08 of the first Schedule hereto. It shall be signed by the assignee or transferee or the duly appointed agent and shall be forwarded to the Director General together with the fee specified in the second schedule hereto.

(2)

Where the provisions of paragraph (1) of this regulation have been complied with, the Director General shall record such assignment or transmission in the Register of Marks.

(3)

The provisions of paragraph (1) and (2) of this regulations shall apply, mutatis mutandis, to the registration of a licence contract under Section 125 of the Act.

1. Any changes effected in the conditions governing the use of a collective mark or certification mark shall be notified to the Director General in writing signed by the registered owner of such mark or his duly appointed agent and shall be accompanied with the fee specified in the second schedule hereto.
2. The provisions of this part shall, mutatis mutandis, apply to collective marks and certification marks, where appropriate.

Part III

PATENTS

32.(1) An application for the grant of a patent under Section 71 of the Act shall be substantially set out in the Form P 01 of the first Schedule hereto and shall be signed by the applicant or his duly appointed agent. Such application shall be accompanied with the fee specified in the second schedule hereto.

(2) An amendment to the application for registration may be permitted in respect of change of name or address of the applicant provided there is no change of the name or address of the applicant by assignment, transmission or otherwise.

33.(1) Where the inventor or the person having title to the invention is dead the legal heir of such inventor or such person having title to the invention may apply to obtain the patent.

(2) Where the applicant dies during the time intervening between the filing of his application and the granting of a patent thereon, the patent may be granted to the legal heir upon proper intervention by him.

1. Where two or more persons have jointly made an invention the application for the grant of a patent shall, subject to regulation No. 33, be made by them jointly. Such application shall be substantially set out in the Form P 01 of the first schedule hereto.
2. Where an invention has been duly assigned the assignee shall make an application for the grant of a patent and such application shall be accompanied with a statement specifying the basis on which the applicant derives the right to such patent.

36.(1) The description of invention shall first state the title of the invention as appearing in the request and shall

(a)

specify the technical field to which the invention relates ;

(b)

indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and preferably, cite the documents reflecting such art ;

(c)

disclose the invention in such terms that it can be understood and in a manner sufficiently clear and complete for the invention to be evaluated as to its novelty, inventive step and industrial application and to be carried out by a person having ordinary skill in the art, and state the advantageous effects, if any, of the invention with reference to the background art ;

(d)

briefly describe the figures in the drawings, if any ;

(e)

set forth at least the best mode contemplated by the applicant for carrying out the invention ; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any ;

(f)

indicate explicitly, when it is not obvious from the description of nature of the invention, the way in which the invention is industrially applicable and the way in which it can be made and used, or, if it can only be used, the way in which it can be used.

(2) The manner and order specified in paragraph (1) shall be followed except when due to the nature of the invention, a different manner or a different order would result in a better understanding and a more economical presentation.

37.(1) The number of the claims shall be reasonable in consideration of the nature of the invention.

(2)

If there are several claims, they shall be numbered consecutively in Arabic numerals.

(3)

Any claim submitted after the filing date of the application and which is not identified with the claims previously appearing in the application shall, at the choice of the applicant, be submitted either–

(a)

as an amended claim, in which case, it shall bear the same number as the previous claim it amends ; or

(b)

as a new claim, in which case, it shall bear the next number after the highest previously numbered claim.

(4)

The deletion of any claim previously appearing in the application shall be made by indicating the number of the previous claim followed by the word “cancelled”.

(5)

Where the application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features. When used, the reference signs shall preferably be placed between parentheses. If inclusion of reference sign fails to particularly facilitate quicker understanding of a claim, it should not be made.

(6)

(a) The definition of the invention shall be in terms of the technical features of the invention.

(b) Whenever appropriate, any claim shall contain the following

(i)

a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art ;

(ii)

a characterizing portion- preceded by the words “characterized in that” “charaterized by” “wherein the improvement comprises” or any other words to the same effect- stating concisely the technical features which, in combination with the features stated under paragraph (i), it is desired to protect.

(iii) (a) Any claim which includes all the features of one or more other claims (claims in dependent form, hereinafter referred to as “dependent claim”) shall do so by a reference, if possible at the beginning, to the other claim or claims and shall then state the additional features claimed. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only. Multiple dependent claims shall not serve as a basis for any other multiple dependent claim.

(b)

Any dependent claim shall be construed as including all the limitations contained in the claims to which it refers or, if the dependent claim is a multiple dependent claim, all the limitations contained in the particular claim in relation to which it is considered.

(c)

All dependent claims referring back to a single previous claim as well as all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.

38. (1) (a) Subject to the provisions of item (ii) of paragraph (b) of this regulation, drawings shall be required when they are necessary for the understanding of the invention.

(b)

Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings

(i)

the applicant may include drawings in the application when filed ;

(ii)

the Director General may require that the applicant file such drawings with him and within a time limit specified by him in writing.

(c)

Where drawings are supplied, a reduction of the most illustrative drawing shall be furnished by the applicant in the size and within the limits specified by the Director General.

(2)

Flow sheets and diagrams are considered drawings.

39. (1) The abstract shall consist of the following :

(a)

a summary of the disclosure as contained in the description, the claims , and any drawings ; the said summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention ;

(b)

where applicable, the chemical formula which, among all the formulae contained in the application, best characterize the invention.

(2)

The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words).

(3)

The abstract shall not contain statements on the alleged merits or value of the invention or on its speculative application.

(4)

Each main technical feature mentioned in the abstract and illustrated by a drawing in the application shall be followed by a reference sign placed between parentheses.

(5)

The abstract shall be accompanied by the most illustrative of any drawings furnished by the applicant.

40.(1) Section 74 of the Act shall be construed as permitting in particular, either of the following two possibilities :

(a)

in addition to an independent claim for a given product, the inclusion in the same application of one independent claim for one process specially adapted for the manufacture of the said product, and the inclusion in the same application of one independent claim for one use of the said product ; or

(b)

in addition to an independent claim for a given process, the inclusion in the same application of one independent claim for one apparatus or means specifically designed for carrying out the said process.

(2)

Subject to the provisions of Section 74 of the Act it shall be permitted to include in the same application two or more independent claims of the same category which cannot readily be covered by a single generic claim.

(3)

Subject to the provisions of Section 74 of the Act it shall be permitted to include in the same application a reasonable number of dependent claims, claiming specific forms of the invention claimed in an independent claim, even where the features of any dependent claim could be considered as constituting in themselves an invention.

41.(1) Any divisional application under Sub-section (2) of Section 75 of the Act shall contain a reference to the initial application.

(2)

If the applicant wishes a divisional application to benefit from any priority claimed for the initial application, the divisional application shall contain a request to that effect. In such a case, the declaration of priority and the documents furnished in accordance with regulation 43 for the initial application shall be deemed to relate also to the divisional application.

(3)

Where the priorities of two or more earlier applications are claimed for the initial application, a divisional application may benefit only from the priority or priorities that are applicable to it.

42. An applicant who wishes that the disclosure of matter constituting the invention claimed in the application should be disregarded for prior art purpose under Subsection (3) Section 64 of the Act may so refer to that in the request and shall set forth the facts in a statement accompanying the application.

43.(1) The declaration of priority referred to in Subsection (1) of Section 76 of the Act shall indicate

(a)

the date of each earlier application ;

(b)

subject to paragraph (2) the number of each earlier application ;

(c)

subject to paragraph (3) the symbol, if any, of the International Patent Classification which has been allocated to each earlier application ;

(d)

the name of the State in which each earlier application was filed or, where the earlier application is a regional or an international application, the name of the State or States for which it is filed ;

(e)

where the earlier application is a regional or an international application, the office with which it was filed.

(2)

Where at the time of filing the declaration referred to in paragraph (1), the number of any earlier application is not known, that number shall be furnished within three months from the date on which the application containing the declaration was filed.

(3)

Where a symbol of the International Patent Classification has not been allocated to the earlier application, or had not been allocated at the time of filing the declaration referred to in paragraph (1), the applicant shall state this fact in the said declaration.

(4)

Where the priorities of two or more earlier applications are claimed, in accordance with paragraph (1), the indication relating to those earlier applications may be included in a single declaration.

(5)

The applicant may, at any time before the grant of the patent, amend the contents of the declaration referred to in the preceding paragraphs.

44.(1) The period for furnishing a certified copy of each earlier application in terms of Sub-section (2) of Section 76 of the Act shall be three months from the date of request of the Director General.

(2)

Where a certified copy referred to in paragraph (1) has already been furnished for another application, the applicant may respond to the Director General by making a reference to that other application.

(3)

Where the earlier application referred to in paragraph (1) is in a language other then the language of the application for grant of a patent in Sri Lanka, the Director General may require the applicant to furnish him, within three months, with a translation of the earlier application in the language of the application for the grant of such patent in Sri Lanka certified as correct by a sworn translator. The Director General may extent the time limit for such period as he deems appropriate.

45. Where the applicant fails to fulfill the requirements of Section 76 of the Act and regulations 43 and 44 of these regulations, the Director General shall require such applicant to furnish him with the necessary corrections of the application within three months from the date of his request.

46.(1) The applicant or his duly appointed agent, if so authorized in that behalf by the applicant, may withdraw the application at any time during its pendency.

(2) The withdrawal of the application shall be effected by a written declaration addressed to the Director General. In the case of several applicants, the declaration shall be signed by all the applicants or their duly appointed agents.

47.(1) The date of receipt of the application shall be recorded as the filing date of such application.

(2)

If the Director General finds that, at the time of receipt of the application, the requirements referred to in Subsection

(1)

of Section 77 of the Act were not complied with he shall request the applicant to file the required correction within three months from the date of the request of the Director General. The Director General may extend that time limit for such period as he deems appropriate.

(3)

When the applicant complies with the request referred to in paragraph (2), the Director General shall record as the filing date, the date of receipt of the required correction.

(4)

Where the application refers to drawings, which in fact are not included in the application, the Director General shall request the applicant to furnish the drawings referred to in application within three months from the date of intimation of the Director General. The Director General may extend that time limit for such period as he deems appropriate. If the applicant complies with the said request, the Director General shall record as the filing date of the application the date of receipt of the missing drawings. Otherwise, the Director-General shall record as the filing date of the application the date of the receipt of the application and shall treat any reference to the said drawings as non-existent.

48. (1) The search report referred to in Subsection (1) of Section 73 the Act shall be an international type search report.

(2)

The applicant shall furnish to the Director General, within three months from the date of issue of the international type search report referred to in Subsection (1) of Section 73 of the Act, two copies of that report.

(3)

The international-type search report required under Subsection (1) of Section 73 of the Act shall be a report issued by any national intellectual property office or inter-governmental organization appointed as an International Searching Authority under the Patent Co-operation Treaty.

(4)

For the purpose of Subsection (1) of Section 73 of the Act, the translation in the English Language of the International-type search report shall extend to the text of that report as such, but does not include the text of any document cited in that report unless the Director General, after an examination of the translation accompanying that report, requires the applicant to furnish a translation of the text of any given document so cited or of any portion of that document.

49. The period referred to in Subsection (3) of Section 78 of the Act shall be a period of three months from the date of the request made by the Director General. Where the fee specified in the second schedule hereto is not paid and the corrections are not duly effected within the said period of three months the application shall be rejected.

50.(1) Where the Director General considers appropriate the notice referred to in the proviso to Subsection (2) of Section 79 of the Act shall be published in a widely circulated newspaper in Sinhala, Tamil and English.

(2)

The certificate of the grant of a patent, specified in Subsection (2) of Section 79 of the Act shall contain the number of the patent, the name and address of the owner of the patent, date of filing, date of priority, if any, of the application and the date of grant of the patent and the title to the invention.

(3)

The certificate of the grant of a patent shall be signed by the Director General or any officer authorized by him.

51. The patent granted in pursuant to Section 79 of the Act shall, in addition to a copy of the description, the claims, the drawings, if any, and the abstract, include the following particulars :

(a)

the name and address of the inventor, except where the inventor has indicated that he wishes not to be named in the patent ;

(b)

the date and if any, the number of the international-type search report and the name of the institution issuing the report.

52.(1) Any application under Section 88 of the Act to the Director General requesting him to record in the Register of Patents the assignment or transmission of an application for the grant of a patent or the grant of a patent, shall be substantially set out in the Form P 02 of the first Schedule hereto. It shall be forwarded to the Director General together with the fee specified in the second schedule hereto.

(2)

Where the provisions of paragraph (1) of this regulation have been complied with, the Director General shall record such assignment or transmission in the Register of Patents.

(3)

Paragraph (1) and (2) of this regulation shall apply, mutatis mutandis, to the licence contracts under Section 91 of the Act.

1. The publication of registration of a patent under Subsection (3) Section 79 of the Act shall be substantially set out in the form P03 of the first Schedule hereto.
2. The application for renewal of a patent under Subsection (2) Section 83 of the Act shall be substantially set out in the Form P 04 of the first Schedule hereto.

Part IV

LAY OUT DESINGS OF INTEGRATED CIRCUITS

1. The application for the registration of a layout design of integrated circuit under subsection (1) of Section 150 of the Act shall be substantially set out in the FormIC 01 of the first schedule hereto together with the fee specified in the second Schedule hereto.
2. The Register of Layout Designs shall contain in addition to the particulars specified in subsection (3) of Section 151 of the Act, the name and address of the agent, if any.
3. The counter claim referred to in subsection (2) of Section 152 of the Act shall be in writing giving necessary information in clear and concise manner.

Part V

REGISTERED AGENTS

58.(1) Subject to the provisions of Section 175 of the Act and regulations made under the Act a persons shall be qualified to be registered as an Agent if such a person.

(i)

is an Attorney-at-Law of the Supreme Court of Sri Lanka ; or

(ii)

(a) has passed the examination as specified hereinafter ; and

(b) has been successful at the interview conducted by the Director General ; or

(iii) a corporate body or a firm qualified under Subsection (4) of Section 175 of the Act.

(2)

(i) The Director General may conduct an examination on his own or with the assistance of Sri Lanka Law College or Sri Lanka Institute of Development Administration, as and when he considers necessary, for the admission and registration of Agents.

(ii)

The Director General shall cause to be called for an application from any person possessing the required qualifications under paragraph (iii) for the examinations from time to time.

(iii) The persons who ;

(a)

have passed the G. C. E. (A. L.) Examination in four subjects (old syllabus) and 3 subjects (new syllabus) at not more than two sittings ;

(b)

have Credit passes at G. C. E. (O. L.) in English and Sinhala or Tamil as a subject ; and

(c)

not less than 18 years of age ; shall be qualified to apply for the examination.

(3)

The examination will have 2 papers on the following subjects :

(i)

Intellectual Property Law

(ii)

Administration of Intellectual Property and International Conventions. 13 – G 007022

(4)

Syllabus–

(i)

Intellectual Property Law :

The candidates will be tested on their knowledge on the principles of Intellectual Property Law as provided in the Intellectual Property Act No. 36 of 2003. This 3 hour paper will contain 12 questions and the candidates are required to answer 8 questions. One answer will carry a maximum of 12.5 marks and total marks will be 100. Pass marks will be 45.

(ii) Administration of Intellectual Property and International Conventions. This paper will consist of two parts - (a) and (b)

(a) Administration of Intellectual Property :

The candidates will be tested on their knowledge on the regulations made under the Intellectual Property Law, the preparations and prosecution of applications relating to trademarks, patents, industrial designs, integrated circuits etc., functions, duties and responsibilities of Agents and work practices in the Intellectual Property Office.

(b) International Conventions :

The candidates will be tested on their knowledge on international conventions on intellectual property administered by the WIPO and the UPOV Convention and the TRIPS Agreement and their application to Sri Lanka.

This three hour paper will contain 12 questions and the candidates are required to answer 8 questions. It is necessary to choose minimum of 2 questions from each part. One answer will carry a maximum of 12.5 marks and total marks will be 100. Pass mark shall be 45.

(5)

The candidate shall pay the examination fee as decided by the Examination Authorities referred to above.

(6)

Those who have passed the examination shall be interviewed by the Director General. At the interview the Director General shall examine the required qualifications of the candidate for the examination. The Director General shall also examine whether the candidate is fit and proper person to function as a registered Agent. The Director General shall satisfy himself about the good character and behaviour of the candidate, his leadership qualities and communication skills.

(7)

No person shall be entitled to be registered as an Agent if such person–

(a)

has been judged by a competent Court to be of unsound mind ; or

(b)

having been judged as an insolvent or bankrupt has not been granted by a competent Court a certificate to the effect that his insolvency or bankruptcy has arisen wholly or partly from inevitable losses or misfortune ; or

(c)

has been convicted of a crime, except minor traffic offences, by a competent Court whether in Sri Lanka or elsewhere and has not been granted a free pardon ; or

(d)

cease to have qualifications specified in paragraph (1) of this regulation.

(e)

has been removed from the Register by the Director General

(8)

(i) Those who possess the qualifications required under Section 175 of the Act and regulations made thereunder shall be entitled to be registered as Agents in the Register of Agents subject to the payment of the fee specified in the second schedule hereto. The application for the registration shall be substantially set out in the Form A 01 of the Schedule hereto.

(ii)

The Director General shall maintain a Register of Agents for the registration of those qualified to act as Agents under Section 175 of the Act or these regulations.

(iii) The full name and address of the Agent shall be placed in the Register together with the particulars of the registration as an Agent.

(iv)

Any Attorney-at-Law qualified to be registered under Section 175 of the Act may make an application for the registration of his name as an Agent to the Director General substantially set out in the Form A 01 of the first schedule hereto with the fee specified in the second schedule hereto. He shall forward the Attorney-at-Law Certificate to the Director General for examination and return together with a copy of the same.

(v)

Any corporate body of firm qualified to be registered under Section 175 of the Act may make an application for the registration of its name as an Agent to the Director General substantially set out in the Form A 01 of the first schedule hereto with the fee specified in the second schedule hereto. Such body or firm shall forward to the Director General necessary evidence to establish its qualifications to act as an Agent.

(9)

The Director General shall issue, upon the registration of the Agent in the Register of Agents certificate of registration to the Agent certifying the fact that his name is registered as an Agent and he is entitled to function as an Agent under the Intellectual Property Act.

(10)

(i) The Director General shall remove the name of any Agent from the Register if–

(a)

such Agent has made a written application for such removal ; or

(b)

such Agent is dead ; or

(c)

any Agent who has ceased to have the qualifications specified under Sections 175 of the Act or the regulations made thereunder.

(d)

the Director General considers that the name of such person should be removed from the Register for any act of negligence, dishonesty, misconduct or immoral act committed by such an Agent.

(ii)

An Agent who has not paid the renewal fee specified in the second schedule hereto within a period of two weeks from the expiry of his registration.

(iii) Before making the decision under Regulations 10 (i) (d) the Director General shall call upon the person concerned to show cause why his registration should not be cancelled and shall make such inquiry as the Director General may consider necessary.

(11)

The Director General shall cause to be published a list of the registered Agents. He shall also cause to be published the removal of the Agents from the Register of Agent.

(12)

Any reference made to Agent in these regulations means the Agent duly registered under Section 175 of the Act.

Part VI

INTELLECTUAL PROPERTY FUND

59.(1) The monies from the Intellectual Property Fund established under Section 176 of the Act shall be used only for the purpose of the administration of the provisions of the Intellectual Property Act.

(2)

The Director General shall for the purpose of allocating funds from the Intellectual Property Fund first make a written request to the Secretary for approval giving the necessary information and figures with regard to the expenditure concerned.

(3)

Having satisfied that the allocation requested by the Director General is reasonable and for the purpose of the administration of the provisions of the Intellectual Property Act the Secretary shall give his approval.

(4)

Money shall not be allocated or spent from the Intellectual Property Fund in any manner or any purpose other than the manner and purpose provided above.

Part VII

FEES

60.(1) Where any person liable to pay any fee under these regulations is not resident in Sri Lanka and represented by a duly appointed agent, such person shall pay such fee by way of a bank draft drawn in favour of the Director General .

(2) In the case of cheque the date of payment will be the date of realization of the cheque.

Part VIII

MISCELLANEOUS

61.(1) Any request under subsection (1) of Section 163 of the Act shall be made in writing signed by the owner or his dully appointed agent.

(2) An application under subsection (1) of Section 163 of the Act can also be made for the correction of any clerical error in any register maintained in the office.

62. All the regulations made under the Code of Intellectual Property Act No. 52 of 1979 (as amended) are hereby rescinded.

FIRST SCHEDULE Form D 01 (Regulation 2(3))

FORM D 02 (Regulation 6(i))

FORM ‘D 03’

(Regulation 8)

(Regulation 9 (1))

FORM ‘D 04’

FORM ‘D 05’ (Regulation 9(2))

INTELLECTUAL PROPERTY ACT No. 36 OF 2003 INDUSTRIAL DESIGNS PUBLICATION OF RENEWAL

FORM ‘D 06’ (Regulation 10(I))

14 – G 007022

FORM ‘M 01’ (Regulation 11)

FORM ‘M 02’ (Regulation 20 (1)) FORM ‘M 03’ (Regulation 21)

FORM ‘M 04’ (Regulation 24) FORM ‘M 05’ (Regulation 25)

FORM ‘M 06’ (Regulation 26) FORM ‘M 07’ (Regulation 27) FORM ‘M 08’ (Regulation 29(1))

15 – G 007022

FORM ‘P 01’ (Regulation 32(1)) VI. Basis of Applicant’s Right to the Patent (Cross the appropriate box)

Applicant is the Inventor

Applicant is the legal representative of inventor

Applicant is the assignee of the inventor

Applicant is the owner of the invention which was made

while the inventor was in the employment of the applicant.

by the inventor in the performance of a contract for the execution of work

A statement specifying in more detail basis of the Applicant’s (who is not the inventor) right to the patent accompanies the application (Provide sufficient copies of the statement for all non-applicant inventors)

VII. The declaration of the inventor indicating the willingness to forgo his name being included in the patent is annexed (where applicable)

VIII. Divisional Application (cross the appropriate Box) :

This Application is a Divisional Application

The benefit of the filing date of the initial application is claimed in as much as the subject matter of the present application is contained in the initial application identified below : Initial Application Number : Date of filing of Initial Application :

IX. Disclosures to be disregarded for prior art purposes : (Cross the appropriate box)

Disclosure was due to acts of applicant or his predecessor in title. Date of disclosure :

Disclosure was due to abuse of rights of applicant or his predecessor in title. Date of disclosure :

(A statement specifying in more detail the disclosure should accompany the application)

X. Priority Claim (if any) The priority of an earlier application is claimed as follows : Country (if the earlier application is regional or international application indicate those countries for which it was

filed) Filing Date : Application Number :

FORM ‘P 02‘ (Regulation 52 (1)) FORM ‘P 03’ (Regulation 53)

(Regulation 54)

FORM ‘P 04’

FORM ‘IC 01’ (Regulation 55) FORM ‘A 01’ (Regulation 58(8))

SECOND SCHEDULE

FEES

Industrial Designs Rs.

1. Application under Section 33(2) -1000.00
2. Counter statement under Section 33(3) -1000.00
3. Application for registration of a design-A student (schools, technical and other similar Colleges and University undergraduates) -500.00 An Individual -750.00 Others -1000.00
4. For grounds of decision -1000.00
5. With written submissions under Section 40(5)(a) -1000.00
6. Publication under Section 40(6) (per cm 1x cm 1) -500.00
7. Notice of objection under Section 40 (9) -1000.00
8. For inspection of application -100.00 (To obtain a copy thereof by the creator or a person named as the creator (per page) -100.00
9. (i) For inspection of the register -100.00

(ii) For inspection of the relevant Industrial Design File -100.00

10. (i) For obtaining copies of documents relating to an industrial designA4 size page or part thereof -100.00 Each additional page or part thereof -50.00

(ii) For a page of document not specified n paragraph (i) above (page or a part of thereof) -50.00

(iii) For obtaining the certified copies of documents referred

to in paragrph (i) and (ii) one page -200.00 Every additional (page or a part thereof) -50.00

1. For publication in the Gazette of the registration of the Industrial Design (per 1cm x1 cm) -100.00
2. For 01st renewal of registration -2000.00
3. for 2nd renewal of registration -4000.00
4. Payment of surcharge for late payment (of renewal fee) -10%
5. (i) For a certificate as to the current status of the registration of a design -500.00

(ii) For the preparation of priority documents -750.00

1. Request to enter name of a new owner by assignment or transmission -1000.00
2. Request to correct clerical error caused by an act of the owner or his agent -100.00
3. Request to enter change of name or address -500.00
4. Application for recording particulars of licence contract or sub-licence or assignment or transmission -1,000.00
5. Application for recording the renunciation, expiration or Termination of a licence contract or Sub-Licence -500.00

Marks

01. Application for registration of each

(a)

Mark

(i)

individual applicant -1000.00

(ii)

Others -3000.00

(b)

Collective mark -5000.00

(c)

Certification mark -5000.00 16 – G 007022

Rs.

1. On application to Director General to state grounds of decision -1000.00
2. On notice of opposition for registration of a mark -2000.00
3. On observations of applicant in answer to notice of opposition -1000.00
4. On the hearing of opposition by applicant and opponent each -1000.00 06, For registration of a mark and issue of certificate -1000.00

1. Upon each entry in the register of a note that mark is associated with a newly registered mark -300.00
2. On application to register a subsequent proprietor/applicant in cases of assignment or transmission.

(a)

For a single mark -2000.00

(b)

For every additional mark, the devolution being identical in each case and if made in one application -500.00

09. On application to change the name or address of proprietor/applicant where there has been no alteration of proprietorship ;

(a)

For a single mark -1000.00

(b)

For every additional mark, the change being the same in each case and if made in one application -500.00

10. (a) Renewal of registration of a mark

(i)

individual owner -3000.00

(ii)

Others -4000.00

(b)

Renewal of a collective and certification mark -5000.00

(c)

Surcharge -10% of the fee

11. On application to alter the address of registered proprietor or the licensee

(a)

For a single mark -1000.00

(b)

For every additional mark, the alternation being the same in each case and if made in one application -500.00

1. For every entry in the register or a rectification thereof or an alteration therein not otherwise charged -500.00
2. For canceling the entry or part of the entry of a mark upon the register, on the application of the owner of such mark -500.00
3. On an application to the Director General for leave to add or to alter a mark or collective mark or certification mark -3000.00 and for publication in the Gazette of Mark if leave is granted (1cm x 1 cm) -200.00
4. For inspecting register, application, notice of opposition, observation or decisions or any other document related to documents enumerated above -100.00
5. For obtaining copies of documents relating to all kinds of marksA4 size page or part thereof -100.00 Each additional page or part of thereof -50.00
6. For a page or part thereof of documents not specified in 16 above -50.00
7. For obtaining the certified copies of documents referred to in regulation 16 and 17 above one page -200.00 Every additional page or a part thereof -50.00
8. For publication of mark (per 1cm x1cm) -100.00
9. Application on request for recording particulars of licence contract or sub licence or assignment or transmission 1000.00
10. Application for recording of expiration or termination of the licence contract -500.00
11. Application for renunciation of the registration of any goods or services for which a mark is registered either wholly or in respect of part of the goods or service and -500.00 For publication in the Gazette of that renunciation of registration (Per 1cm x 1cm) -100.00
12. Application of change in the conditions governing the use of a collective mark or certification mark and -2000.00

Rs.

For publication in the Gazette of the notification of changes (Per 1cm x 1 cm) -100.00

24. (i) For a certificate as to the current status of the registration of the mark -500.00

(ii) For the preparation of priority documents -750.00

25. (i) For correction of clerical error caused by the owner or his agent -500.00

(ii) Deletion of a mark under Regulation No. 15(2) -250.00

Patents

01. On application for the grant of a patent

(i)

Students (School, technical and other similar Colleges and University undergraduates) -1000.00

(ii)

Individuals -2500.00

(iii) Others -6000.00

1. On request to refer an application to a local examiner -1000.00
2. On inspection by the inventor of the application -100.00
3. For the preparation of an abstract by the Director General -3000.00
4. (i) For obtaining copies of documents relating to a patentA4 size page or part thereof -100.00 Each additional page or part of thereof -50.00

(ii) For a page of documents not specified in paragraph (i) above (page or a part thereof) 50.00

1. For obtaining the certified copies of documents referred to in regulation 5(i) and (ii) one page 200.00 Every additional page or a part thereof -50.00
2. On application for the assignment or transmission of a patent application or patent-1500.00
3. On request of recording particulars of

(a)

a licence contract or of any assignment, transmission, sub-licence, amendment, renewal -1000.00

(b)

Expiration or termination thereof -500.00

09. (i) For an amendment in the application -1000.00

(ii) For the entry of change of name or address -500.00

(iii) For rectification of any clerical error caused by an act of the owner or his agent -500.00

(iv)

For a divisional application -2500.00

(v)

For any amendment thereof -1000.00

(vi)

Any correction as required by Director General under Section 78 -500.00

1. For inspection of the register of patents in respect of each patent -100.00
2. For inspection of the file relating to the Patent after the grant of the patent or with the permission of the applicant before the grant -100.00
3. for divulging permissible information before the grant of the patent by the Director-General -200.00
4. In order to keep the patent in force

(I)

Students (School, Technical and other Colleges and University Undergraduates)

(a)

For the first extension -1500.00

(b)

For the second extension -1500.00

(c)

For the third extension -2000.00

(d)

For the fourth extension -2500.00

(e)

For the fifth extension -3000.00

(f)

For the sixth extension -3500.00

(g)

For the seventh extension -4000.00

(h)

For the eighth extension -4500.00

(i)

For the ninth extension -5000.00

(j)

For the tenth extension -5500.00

(k)

For the eleventh extension -6000.00

(l)

For the twelfth extension -6500.00

(m)

For the thirteenth extension -7000.00

(n)

For the fourteen to eighteen extension (each) -7500.00

(II)

Individuals

(a)

For the first extension -3000.00

(b)

For the second extension -3500.00

(c)

For the third extension -4000.00

(d)

For the fourth extension -5000.00

(e)

For the fifth extension -6000.00

(f)

For the sixth extension -7000.00

(g)

For the seventh extension -8000.00

(h)

For the eighth extension -10000.00

(i)

For the ninth extension -11000.00

(j)

For the tenth extension -12000.00

(k)

For the eleventh extension -13000.00

(l)

For the twelfth extension -14000.00

(m)

For the thirteenth extension -15000.00

(n)

For the fourteen to eighteen extension (each) -20000.00

Rs.

(III) Others

(a)

For the first extension -4000.00

(b)

For the second extension -5000.00

(c)

For the third extension -7000.00

(d)

For the fourth extension -8000.00

(e)

For the fifth extension -10000.00

(f)

For the sixth extension -12000.00

(g)

For the seventh extension -14000.00

(h)

For the eighth extension -16000.00

(i)

For the ninth extension -18000.00

(j)

For the tenth extension -20000.00

(k)

For the eleventh extension -22000.00

(l)

For the twelfth extension -23000.00

(m)

For the thirteenth extension -25000.00

(n)

For the fourteen to eighteen extension (each) -35000.00

1. Surcharge on the application for extension 10% of the present fee
2. (i) For a certificate as to the current status of the patent -500.00

(ii) For the preparation of priority documents -1000.00

Layout Designs of Integrated Circuit

1. Application for registration -3000.00
2. Examination of the Register or the related file -100.00

Rs.

1. Application for transfer of application or registration of a layout designs under Section 152(1) -2000.00
2. For counter claim under Section 152(2) -1000.00
3. For obtaining the copies of documents relating to a layout design one page or part thereof -100.00 each additional page or part thereof -50.00
4. Certified copies of the documents referred to in regulation No. 5 each page or part thereof -200.00 Each additional page or part thereof -50.00
5. Registration of assignment, transmission or licence contract or sub licence under Section 153 -1000.00

Agents

1. Registration of an agent

(i)

Individuals -5000.00

(ii)

Others -10000.00

2. Renewal of registration

(i)

Individuals -7500.00

(ii)

Others -15000.00

17 – G 007022

(Regulations 16)

FORTH SCHEDULE CLASSES OF GOODS AND SERVICES FOR THE PURPOSE OF REGISTRATION OF MARKS/CERTIFICATION MARKS/COLLECTIVE MARKS Goods

Class 10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth ; orthopedic articles ; suture materials

Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes

Class 12 Vehicles ; apparatus for locomotion by land, air or water

Class 13 Firearms ; ammunition and projectiles ; explosives, fireworks

Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes ; jewelry, precious stones ; horological and chronometric instruments

Class 15 Musical instruments

Class 16 Paper, cardboard and goods made from these materials, not included in other classes ; printed mater, bookbinding material ; photographs ; stationery; adhesives for stationery or household purposes ; artists’ materials ; paint brushes ; typewrites and office requisites (except furniture) ; instructional and teaching materials (except apparatus) ; plastic materials for packaging (not included in other classes) ; printer’s type ; printing blocks

Class 17 Rubber, guuta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes ; plastics in extruded form for use in manufacture ; packing, stopping and insulating materials ; flexible pipes, not of metal

Class 18 Leather and imitations of leather, and goods made of these materials and not included in other classes ; animal skins, hides ; trunks and travelling bags ; umbrellas, parasols and walking sticks ; whips, harness and saddlery

Class 19 Building materials (non-metallic) ; non-metallic rigid pipes for building ; asphals, pitch and bitumen ; non-metallic transportable buildings ; monuments, not of metal

Class 20 Furniture, mirrors, picture frames ; goods (not included in other classes) of wood, cork, reed, cane, wicker, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics and substitutes for horn, bone, ivory and whalebone

Class 21 Household or kitchen utensils and containers (not of precious metal or coated therewith) ; combs and sponges ; brushes (except paint brushes) ; brush-making materials ; articles for cleaning purposes ; steelwool ; unworked or semi-worked glass (except glass used in building) ; glassware, porcelain and earthenware not included in other classes

Class 22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) ; padding and stuffing materials (except of rubber or plastics) ; raw fibrous textile materials

Class 23 Yarns and threads, for textile use

Class 24 Textiles and textile goods, not included in other classes ; bed and table covers

Class 25 Clothing, footwear, headgear

PRINTED AT THE DEPARTMENT OF GOVERNMENT PRINTING, SRI LANKA.