Important Issue
Whether the Controller was right in refusing patent application no. 8373/DELNP/2014 on the sole ground of alleged non-filing of proof of right document.
Case Summary
Factual matrix
- DOW filed Indian Patent Application bearing no. 8373/DELNP/2014 being the national phase application under PCT, and the date of filing national phase entry was 08.10.2014.
- The First Examination Report (FER) was issued on 20.06.2018 which raised inter alia an objection regarding non-filing of proof right according to Section 7(2) of the Act. This requirement pertains to filing a proof of right by appellant, in cases where the right to apply for a patent has been granted to the applicant by the inventor, through an assignment.
- DOW submitted its response on 28.09.2018 stating that WIPO cover page with 4.17(ii) declaration in lieu of proof of right has been filed to satisfy this requirement of proof of right.
- Despite this submission, the Respondent in hearing notice dt. 31.10.2018 maintained that the requirement u/s 7(2) has not been filed yet.
- During the oral hearing and in the written submission filed thereafter, DOW brought to the Controller’s notice the declaration filed under PCT which can be considered as compliance under Section 7(2) of the Act, and also referred to provisions in PCT supporting the same.
- The Controller vide order dt. 31.01.2020 rejected the application on the above ground of non-filing of proof of right.
- DOW appealed to the IPAB against the said order.
Held
The Court analysed the provisions of the Patents Act, 1970 as well as the PCT in reference to the requirement of filing proof of right for patent applications. Sections 6, 7, and 134 of the Act, read with Rule 10 of the Patent Rules 2003 state that in case of assignment, applicant has to file a proof of right to apply for the patent and such proof has to be filed within 6 months from the date of filing an application with the Indian Patent Office (IPO).
Furthermore, Rule 51bis of the PCT states that unless the designated office doubts the veracity of the declaration filed under PCT, the applicant shall not be asked to submit a separate proof of right in the national phase. The same has been adopted by the IPO on its website which under “Summary of requirements for entry into the national phase” has notified that the requirement of instrument of assignment or transfer, where the applicant is not the inventor is satisfied, if the corresponding declaration has been made in accordance with PCT Rule 4.17.
The Court observed that in this case, the Controller failed to appreciate that a declaration as under PCT Rule 4.17 had already been filed and the same was available on the website of the IPO as well as WIPO. Although the declaration available on the IPO website was not according to format, the same was never pointed out by the Controller.
Thus, in light of the above analysis, the impugned order was set aside and the Controller was directed to grant the patent under application 8373/DELNP/2014.
Citation: 2020 SCC OnLine IPAB 112