JOHN WILSON PARTNERS,
Attorneys-at-Law & Notaries Public,
365 Dam Street, Colombo 12, Sri Lanka.
http://www.srilankalaw.com
APAA PATENTS COMMITTEE – Adelaide, 2007
SRI LANKA REPORT:
Determination of Inventive Step in Asian Countries
1.What are the elements or conditions for determining an inventive step or
obviousness in your country?
Section 65 of the Intellectual Property Act No. 36 of 2003 provides that an
invention shall be considered as involving an inventive step, if, having regard to
the prior art relevant to the patent application claiming the invention, such
inventive step would not have been obvious to a person having ordinary skill in
the art.
2. How is the way of creating an invention (e.g. "flash of creative genius")
evaluated regarding an assertion of an inventive step or obviousness in your
country?
Neither the Act nor the regulations gazetted thereunder specifically refer to the
manner of creating an invention. As long as the invention is not obvious to a
person having ordinary skill in the art, the requirement of inventive step is fulfilled.
It should be noted that there is no reported case law on the concept of “inventive
step.”
3. How is the effect or function of an invention evaluated regarding an assertion
of an inventive step or obviousness in your country?
Neither the Act nor the regulations gazetted thereunder specifically refer to an
evaluation of the effect or function of the invention. As long as the invention is
not obvious to a person having ordinary skill in the art, the requirement of
inventive step is fulfilled. It should be noted that there is no reported case law on
the concept of “inventive step.”
4. How is the commercial success evaluated regarding an assertion of an
inventive step or obviousness in your country?
Neither the Act nor the regulations gazetted thereunder specifically refer to an
evaluation of the commercial success of the invention. As long as the invention is
not obvious to a person having ordinary skill in the art, the requirement of
inventive step is fulfilled. It should be noted that there is no reported case law on
the concept of “inventive step.”
5. Is there any measure under your patent practice that can be taken to prevent
hindsight from being applied?
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JOHN WILSON PARTNERS,
Attorneys-at-Law & Notaries Public,
365 Dam Street, Colombo 12, Sri Lanka.
http://www.srilankalaw.com
Neither the Act nor the regulations gazetted thereunder specifically refer to
hindsight. As long as the invention is not obvious to a person having ordinary skill
in the art, the requirement of inventive step is fulfilled. It should be noted that
there is no reported case law on the concept of “inventive step.”
In regard to the questions at 1) to 5) above it should be noted that it would be
open to any litigant to argue any of the issues comprised in the said questions by
reference to principles derived from case law in other countries. English case law
authorities are regarded as persuasive and obviously if there is similarity in
wording between the provisions in the English law and the Sri Lankan provisions,
greater respect would be accorded such authority or authorities.
Further Questions
Item (i)
How is it evaluated whether an invention is a mere combination of elements?
Must any synergistic effect be proved by the combination of elements?
There are no provisions contained in the law or regulations in regard to
synergistic effect. There are no reported cases dealing with synergistic effect.
Item (ii)
Assume the following situation:
(1) The claimed invention is A+B+C.
(2) Cited Reference D1 discloses A+B in the same technical field as that of
the claimed invention.
Cited Reference D2 discloses C in the same technical field as that of the
claimed invention.
The claimed invention uses C for accomplishing the purpose X, while D2
discloses that C is used for the purpose Y which is distinct from the
purpose X.
There are no express statutory provisions dealing with this scenario. The answer
to the problem would have to evaluate by reference to the relevant principles on
novelty/inventive step as contained in the Act.
It should be noted that there is no reported case law on the concept of “novelty”
or “inventive step.”
John Wilson (Jr.)
Managing Partner
JOHN WILSON PARTNERS
Attorneys-at-Law & Notaries Public.
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JOHN WILSON PARTNERS,
Attorneys-at-Law & Notaries Public,
365 Dam Street, Colombo 12, Sri Lanka.
http://www.srilankalaw.com
Patent and Trademark Attorneys.
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