Proof of right requirement for Indian patent applications
By Deepak Singh
Persons entitled to file application in India
Section 6 of the Patents Act, 1970 (‘the Act’) states that an application for patent can be made, either alone or jointly, by a true and first inventor, an assignee of the inventor, or a legal representative of the inventor or the assignee. The expression 'true and first inventor' has been defined under Section 2(y) of the Act as one which "does not include either the first importer of an invention into India, or a person to whom an invention is first communicated outside India".
The expression 'inventor' has not been defined under the Act. It, however, has been interpreted to generally mean a person who contributes any part of his ingenuity, skill or technical knowledge towards the invention. In V.B. Mohd Ibrahim v. Alfred Schafrank [AIR 1960 Mys 173 at 175], it was held that a person, such as a financial partner, who has not contributed any skill or technical knowledge towards the invention cannot be said to have any capacity to invent, and hence cannot be said to be the inventor. Further, in Shining Industries v. Sri. Krishna Industries [AIR 1975 All 231 at 234], it was held that in the case of a person such as financial partner or employer or firm, an inventor or an employee of a firm may assign the rights to the firm for making an application for patent and in such case, the firm can apply for a patent only as an assignee.
The expression 'assignee' has been defined under Section 2(ab) of the Act as including “an assignee of the assignee and the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person". In Sethi Construction Company v. CMD, NTPC [2002 (65) DRJ 732 at 9], it was held by the High Court of Delhi that “an assignment is in the nature of a transfer by one to another, of his interest or rights in one's property and vests in the latter the former's interests, rights and remedies in respect of the subject matter. In such a case, the latter by virtue of the assignment in his favour will be in position to enjoy the rights of the former in his own name."
Requirement of proof of right for assignee
In case an application for patent is made by an assignee, Section 7(2) of the Act read with Rule 10 of the Patent Rules provides that a proof of right to make the application should be furnished with the application, or within a period of six months of filing the application. This is necessary to establish that the applicant derives title in the patent from the true and first inventor or the rightful owner of the invention, and the applicant has the right to apply for and be granted a patent. Further, Section 68 of the Act states that assignment shall not be valid unless it is in writing and reduced to the form of a document embodying all the terms and conditions governing the rights and obligations.
Documents for establishing proof of right
For the purpose of the Indian Patent Office, the assignment document may take several forms. Usually, the application Form -1 of the Act contains an endorsement by the true and first inventor assigning the right to apply for the patent to the assignee. Otherwise, an original assignment deed or its notarized copy, clearly containing an assignment from the true and first inventor(s) to the applicant would suffice as the proof of right under the Act. This is true for both original applications and convention applications.
Even in case a convention application claims priority from a country, for example, U.K., Netherlands, Malaysia, Germany or France, where employee's invention belongs to employer, the proof of right is required to be submitted to the Indian Patent Office, under Section 7(2) of the Act read with Rule 10 of Patents Rules. Further, in respect of convention applications, the assignee can also submit a certified copy of the patent assignment recorded with the patent office in the convention country as the proof of right. For example, in the United States, once application for patent is filed, the inventors may assign the invention to their organization or any other firm by submitting a patent assignment to USPTO (United States Patent and Trademark Office). Now, in case the assignee seeks to file an application for patent in India, a certified copy of the patent assignment recorded with the USPTO would satisfy the proof of right requirement.
In respect of a PCT national phase application, no proof of right is required if there is no change in inventor(s) and/or assignee at national phase filing and in case the applicant has furnished a declaration under Rule 4.17 of PCT Regulations. However, if there is a change of assignee which has occurred after the international filing date and has not been reflected in a notification from the International Bureau through Form PCT/IB/306, then the application has to be first filed in the name of the original assignee. The change in name of assignee may be effected by fulfilling requisite formalities, which includes submitting an acquisition or assignment or agreement document, once the PCT national phase application is filed.
In yet another scenario, where a PCT application is filed by an inventor and the inventor then assigns the invention to an assignee, the assignee can directly file a national phase application in India if the change in name of applicant is notified though Form PCT/IB/306. Otherwise, the formalities for recording of assignment will have to be fulfilled later along with assignment or agreement assigning the rights from the inventor to the assignee.
It can be seen that the proof of right is a mandatory requirement under the Patents Act in India. There may be certain flexibility in terms of the type of documents that can be submitted as proof of right. But acquiring the rights over an invention through a written assignment or agreement in order to establish the proof of right is an important part of the process of receiving a patent for the invention under the Patents Act and Patent Rules.
[The author is a Senior Associate in the IPR Division of Lakshmikumaran & Sridharan at New Delhi]