The document provides an overview of intellectual property law, emphasizing its role in fostering creativity and innovation while protecting the rights of creators. It outlines various categories of intellectual property such as patents, trademarks, copyrights, and industrial designs, along with relevant laws and requirements for protection. The document also discusses rights, limitations, enforcement mechanisms, and the significance of intellectual property in economic growth and competitiveness.

1. Intellectual Property
Law- an Introduction

2. Moving forward ..
 You are living in a world of competition. It
is knowledge- based & innovation-driven.
 Your creativity and innovative ability and
efforts are essential for success-
individually and collectively

3. Why Intellectual Property
 It fosters and protects human creative efforts for
the benefit of creators as well as of society as a
whole, while attempting to remove undue barriers
to the dissemination of the results of creative
efforts
 It is the body of knowledge [protected] that the
human race holds

4. IP-Meaning
 Intellectual property is a set of legally enforceable
rights resulting from intellectual activity in the
industrial, scientific, literary or artistic fields.
Intellectual Property is a form of property, with
some unique features of its own. It shares several
of the characteristics associated with property.
For example, Intellectual property is an asset and
has a monetary value and can, like any other form
of property, be owned, transferred, sold or
licensed.
 Intellectual property is a kind of intangible
property as it may not be identified or defined by
its own physical parameters. However, to be
protectable, it must be expressed in discernible
from or way.

5. IP Law
 It is the law that deals with categories of IP
, rights
and limitations, acquisition of rights, management
of rights and enforcement of rights
 “Science soars like an eagle, however, law drags
like a turtle” – Carl Cristo [1964]
 Present Law in Sri Lanka- Intellectual Property Act
No. 36 of 2003 [ as amended]

6. Categories of IP
 There are different categories IP that are governed by
different provisions of the IP Act. Each is governed by
its own statutory law. They are mostly based on
international instruments.’ [But common law principles
are not totally ruled out. For ex., undisclosed
information may receive protection under the common
law tort of confidentiality. Action for passing off may
offer protection to a trademark, even unregistered]
 They include: Inventions, Marks [trademarks and service
marks], Collective Marks, Certification Marks, Industrial
Designs, Literary and Artistic Works (copyright), Related
Rights (Performances, sound recordings and broadcasts),
Geographical Indications, Commercial names and
designations Protection against Unfair Competition,
Undisclosed Information, Layout Designs of Integrated
Circuits, New Varieties of Plants and Utility Models …

7. Inventions [Part IV]
 Invention is an idea of an inventor which permits in practice the solution
to a specific problem in technology. [ S. 62 (1)]. An invention is defined
in terms of its technical features. It may relate to a product or a process
[ S. 62 (2)]
 An invention can be protected under the law of Patents or the law of
Undisclosed Information
 A patent, granted by the State, describes an invention and attracts
certain statutory rights in relation to the described invention that can
be exercised only by the owner of the patent, or with the authorization
of the owner of the patent, for a limited period of time. The statutory
law determines the rights attached to a patent. These rights are granted
in exchange for the disclosure of the invention to the public by the
inventor
 There are various categories of subject matter which are commonly
patented such as mechanical devices and articles of manufacture,
chemical compositions or compounds (such chemical compositions as
those developed in the areas of pharmaceuticals, material science,
petrochemicals and biotechnology), computer programs and processes
or methods. [ Now also for ex. AI, 3D printing and block chain
technology etc. ]

8. Inventions
 Some jurisdictions also recognize, for example, the patenting of molecules that have
been isolated and characterized according to their function and potential utility and
generic organism/sequences.
 Likewise, improvements on technology covered under the existing patents also
occur, for example, by improving or enhancing the effect of the protected
technology. If an ‘improvement’ satisfies the requirements of patentability, it can be
patented.
 The patentable subject area is normally defined by national laws
 An invention is patentable if it is new, involves an inventive step and is
industrially applicable.’ [S. 63. These 3 principles are internationally recognized
requirements and go to the roots of the patent law. The US law uses ‘non-
obviousness’ instead of ‘inventive step’ ]
 In addition, the claimed invention must not fall within the subject matter excluded
from patentability [under s. 62(3) ]
 The issue of patentability arises in different circumstances such as at the
examination stage in the Patent Office and in the judicial proceedings involving, for
example, appeals against the decisions of the Patent Office on patentability,
infringement of rights or nullity of patents. In any event, it is necessary first to
decide whether there is an invention. Then, the issue of patentability is addressed.

9. Inventions
 Granting a patent involves a multi-faceted procedure-both
domestically and in different foreign countries. [S.71-79 deal with
application, processing of application and grant of patent
domestically/ in different countries under the Paris Convention or
the Patent Corporation Treaty]
 Proper drafting of a description of an invention and claims is
crucial in an application for a patent
 A patent is valid for a period of 20 years from the date of
application.
 Undisclosed Information: An inventor can keep the invention a
secret without disclosing [without patenting too] and use. So long
as others do not find the specific solution on their own, inventor
has the exclusivity to it. Remember, reverse engineering is not
prohibited.
 Choice of the best mode of protection is for the inventor/owner of
the invention to make. It is a technological/business decision

10. Marks [trademarks and
service marks] [Part V]
 A mark is a visible sign that serves to distinguish the goods or services of one
enterprise [business] from those of another. It is a trademark when it relates to
goods and a service mark when it relates to services.
 A mark helps the consumers to identify the origin of the concerned goods or
services enabling them to distinguish the goods or services one enterprise from those
of others. Other functions include promotion of commercialization of goods or
services
 A mark can be either registered or unregistered. Registered marks receive certain
statutory rights. They are easily enforceable and manageable [through assignments
and licenses etc.] compared with unregistered marks which may receive a kind of
limited protection under the tort of passing off and/or law of unfair competition.
 A Mark is registrable provided it does not fall within any of the grounds of non-
admissibility for registration under s. 103 and 104. S. 103 deals with the so called
grounds ‘objective grounds’ such as descriptiveness and incapability of
distinguishing. S. 104 recognizes the grounds for refusal based on third party rights
 Registration involves somewhat a long process. Registration is valid for 10 years
from the date of application, but is renewable for consecutive 10 year periods
 Remember the difference between a mark and a brand… A ‘brand’ or ‘brand name’
identifies a product or a service of a particular enterprise whereas a mark
distinguishes the goods or services of different enterprises. Consequently, the
concept of ‘brand’ or ‘brand name’ does not fall within the definition of a mark at
all. But, a mark is a tool for branding. IP Act does not protect ‘brands/brand names’

11. Collective Marks
 ‘Any visible sign designated as such and serving to
distinguish the origin or any other common characteristic of
goods or services of different enterprises which use the
mark under the control of the registered owner.’ [S. 101]
 Chapter XXVIII of the Act makes provisions with regard to
the collective marks.
 The provisions relating marks, subject to the provisions of
Chapter XXVIII, are applicable to the collective marks. [ S.
138(1)]
 Moreover, Regulation No. 31 provides that the provisions of
Regulations relating to marks are applicable mutatis
mutandis to the collective marks, where appropriate.
 It is a kind of mark with its own unique characteristics…

12. Certification Marks
 A certification mark means ‘a mark indicating that the goods or services
in connection with which it is used are certified by the proprietor of the
mark in respect of origin, material, mode of manufacture of goods or
performance of services, quality, accuracy or other characteristics.’ [S.
101]
 The provisions relating to certification marks are made under Chapter
XXIX of the Act.
 Section 142 (1) states that subject to the provisions of Chapter XXIX, the
provisions relating to marks-trademarks and service marks-are
applicable to the certification marks.
 Moreover, Regulation No. 31 provides that the provisions of Regulations
relating to marks are applicable mutatis mutandis to the certification
marks, where appropriate.
 It is a kind of mark with its own unique characteristics…

13. Associated Marks
Well-known Marks
 “Where an application is made for the registration of a
mark identical with or so closely resembling a mark of
the applicant already on the Register for the same
goods or services, or the same description of goods or
services as to be likely to mislead or cause confusion if
used by a person other than the applicant, the Director
General may require as a condition of registration that
such marks shall be entered on the register as
associated marks.” [S. 116]
 Well-known marks also enjoy some unique benefits

14. Industrial Designs [Part III]
 The protection accorded to industrial designs under part III exists in addition to, and not in
derogation of, any other protection provided under any other written law. [S.28]
 Consequently, an industrial design attracts protection under the other laws such as
copyright and unfair competition, where appropriate. [Overlapping IP rights]
 Part III protection depends on registration
 An industrial design is: ‘any composition of lines or colors or any three dimensional form,
whether or not associated with lines or colors, that gives a special appearance to a product
of industry or handicraft and is capable of serving as a pattern for a product of industry or
handicraft.’ [S.30]
 However, anything in an industrial design, which serves solely to obtain a technical result,
is not protected
 An Industrial Design receives protection under Part III of the Act only where it
(i) is new and (ii) it does not consist of any scandalous design or is not
contrary to morality or public order or public interest or is not likely to
offend the religious or racial susceptibilities of any community. [S.29]
 Registration is valid for 5 years from the date of application and renewable for two
consecutive period of 5 years
 ID helps promote commercialization of products

15. Literary and Artistic Works
(Copyright) [Part II]
 Copyright refers to the works of authorship covering protected
works, protected rights and management and enforcement of rights
 Protected works are original intellectual creations in literary,
artistic and scientific domain
 They are expressions of ideas, facts and information etc. Ideas,
facts and information etc. are not protected.
 They include: Writings, oral expressions, dramatic works and their
stage productions, musical works, audio-visual works, works of fine
arts, photographs and works of applied art. Derivative works such
as translations and adaptation of existing works
 Two kinds of rights -moral rights [ belonging to the author] and
economic rights [ belonging to the author or any other person] that
last during the life time of the author and 70 years after his/her
death]
 No formality. Upon creation, protection arises.

16. Related Rights [ Part II]
 Rights of the performers such as singers and actors
 Rights of the producers of sound recordings
 Rights of the Broadcasting Organizations

17. Geographical Indications [ S.
160A, 161 and 161A to M]
 The law relating to ‘geographical indications’ emerged from the TRIPS
Agreement. Its Articles 22-24 make provisions on ‘geographical
indications.’ All the member countries of the World Trade Organization
(WTO) are required to comply with these provisions.
 The Geneva Act of the Lisbon Agreement on Appellations of Origin and
Geographical Indications also provides for the protection of geographical
indications by means of a system of international registration executed
through the World Intellectual Property Organization (WIPO).
 A GI is: ‘An indication which identifies any goods as originating in the
territory of a country, or a region or locality in that territory, where a
given quality, reputation or other characteristic of the good is
essentially attributable to its geographical origin.’ [S. 160A]
 Ceylon Cinnamon etc. A tool for better commercialization
 A GI may receive protection in different forms: ‘Sui generis’ form of
protection, Unfair competition, Certification Marks, Collective Marks,
Law of Marks, Registration
 Protection lasts so long as the GI stands as a GI

18. Commercial Names and
Designations
 Trade Names: is the name or designation identifying the
enterprise of a natural or legal person
 TNs are protected, notwithstanding any written law
providing for their registration, even prior to or without
registration, against any unlawful act committed by a third
party.
 A TN is protected, provided it is not contrary morality or
public order or is not likely to offend the religious or racial
susceptibilities of any community or is not likely to
mislead trade circles or the public as to the nature of the
enterprise identified that name
 Any subsequent use of a TN by a third party as a trade
name, mark etc. or similar trade name, mark etc. likely to
mislead the public is unlawful [ S. 143-145]

19. Protection against unfair
competition [S, 160]
 The law of unfair competition attempts to discourage and control the
acts and practices that are contrary to honest practices in industry or
commerce thereby promoting fair competition in the market. In other
words, it attempts to achieve fairness in the market by broadly
preventing any act or practice that is contrary to honest practices in
commerce or industry.
 It is provided that the provisions of section 160 of the Act shall be
applicable independently of, and in addition to, other provisions of the
Act protecting inventions, industrial designs, marks, trade names,
geographical indications, literary, scientific and artistic works and other
intellectual property. These provisions are applicable beyond the
parameters of those intellectual property rights.
 General principle/definition: S. 160(1)(a) declares that “any act or
practice carried out or engaged in, in the course of industrial or
commercial activities, that is contrary to honest practices shall
constitute an act of unfair competition.”
 Examples: S. 160 (2) to (6): causing confusion, causing damages to
goodwill or reputation, misleading, discrediting and disclosure,
acquisition and use of undisclosed information

20. Protection of undisclosed
information
 ‘Undisclosed information’ in this context includes: (i)
technical information related to the manufacture of
goods or the provision of services; or (ii) business
information which includes the internal information
which an enterprise has developed so as to be used
within the enterprise.
 Is protected provided: it is secret, kept secret and has
actual or potential commercial value

21. Layout Designs of Integrated
Circuits [ S. 146-158]
 Layout Designs of Integrated Circuits [or topographies]
used in semiconductor chips are protected

22. New Varieties of Plants
and Utility Models …
 New Varieties of Plants: TRIPS
Agreement requires all member
countries to protect. It is not plants,
but varieties of plants. No law yet in
Sri Lanka
 Utility Models: a utility model is a kind
of technologically inventive result. But
it does not involve an inventive step as
such. They are mostly engineering
improvements. A few countries have
laws, but not Sri Lanka

23. Rights
 Every item of IP attracts defined and specific rights.
For ex. Marks, Patents and Designs – rights to use,
assign & license
Copyright - moral and economic rights
• In many cases rights are time limited
(Marks – 10 years –renewable-, Patents – 20 years
Copyright – life-time of the author & 70 years thereafter
etc.,)
• Some areas such as GI not time limited
• They are exclusive
• Limitations: such as fair use in Copyright and Compulsory
Licenses in Patents

24. Acquisition of rights
 Two mechanisms
(1) Registration- Marks, Industrial
Designs & Inventions etc.
(2) Without formalities and only by
creation-Copyright and undisclosed
information etc.

25. Enforcement
 IP rights can be protected through the
judicial intervention
• Civil remedies – injunctions and
compensation etc. (Commercial High
Court)
• Criminal sanctions – punishment –
Fine / imprisonment or both
(Magistrate’s Court)
• Customs Control

26. Some other areas
 Traditional Knowledge, genetic
resources & bio-technology,
expressions of folklore etc.
 IP and Environment
 IP & Global Economy
 IP and Human Rights
 New technologies and IP etc.

27. Role of IP
 Promotion of creativity
 Technological Information
 Transfer of Technology
 R & D
 Investment
 Catalyst for new technology & business
 Business & Industrial strategies
 Commercialization
 Teaching & education
 Consumer protection
 State revenue
 Contribution to the economic growth

28. IP asset management
 IP assets are the collection of IP rights.
They have, in combination with human
capital, economic value.
 IP asset management is crucial for
enterprises in having competitive
advantage and wealth creation
 IP asset management embraces various
elements –IP audit, IP policies,
infrastructure, creation, acquisition
and use, enforcement, awareness
building and HR development

29. Beyond national boundaries
 IP Rights are territorial, but the international
instruments on IP rights facilitate protection in
different countries
 Sri Lanka is a member country of some of those
instruments
 Sri Lanka is bound to respect the IP rights of the
nationals of those countries under the National Law
 Nationals of Sri Lanka are also entitled to have
protection for their IP rights in those countries under
their national laws
 Most of the substantive provisions of IP laws are
harmonized around the globe to a large extent
pursuant to those instruments

30. International Instruments
 26 conventions administered by WIPO
including, Paris Convention for the Protection
of Industrial Property(1883), Berne
Convention for the Protection of Literary and
Artistic Works (1886), Rome Convention
(1961), WIPO Internet Treaties (1996) and
Patent Cooperation Treaty, etc.,
 TRIPS Agreement, Universal Copyright
Convention and UPOV Convention by the
respective organizations
 Sri Lanka is a member: Paris, Berne, PCT,
TRIPS, etc.

31. Thanks