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Proof of Right in Indian Patent Application

Proof of Right in Indian Patent Application

According to Section 6 of the Patents Act, 1970 a person claiming to be the true and first inventor of the invention, assignee of the person claiming to be the true and first inventor and the legal representative of any deceased person who immediately before his death was entitled to make such an application can file patent applications in India. Thus, it is evident that right to apply is an assignable right; the assignee of the true and first inventor may also apply for the patent. An assignee can either be a natural person or a legal person such as a registered company, research organisation, educational institution or government. In cases of assignment, where the assignee files the application, it is required to submit a ‘Proof of Right’ as per Section 7(2) of the Patents Act, 1970 within the six months from the date of filing of such application as per Rule 10.

In consideration of this requirement, Ayyangar Committee Report on Law of patents (1957) quoted that “The applicant would no doubt have to establish his title to make the application and for this purpose it is sufficient to require him to file an affidavit setting out how he traces his title to the invention. The rules might make provision for the particular evidence which he must produce to prove his case.” Thus, it is clear that an assignee is required to submit a proof regarding his entitlement to apply for Patent.

According to the Indian Patent Office Manual for practice and procedure, the following documents are considered for satisfying ‘Proof of Right’ requirement.

  1. Form 1 (Application for Grant of Patent) – By filling Declarations by inventors under column 12(i) of the Application for Grant of Patent. This requires signature of the inventor(s) stating that the patent applicant is their assignee or legal representative.
  2. A legal assignment from inventor(s) in favour of applicant(s), duly authenticated, irrespective of whether the application is a Convention or National Phase application In this case, either an original deed or notarized copy may be submitted as the proof of right. Though assignments are usually done in writing, the Patents Act or the Patents Rules do not preclude an oral assignment. No procedural formalities are stipulated under the Patents Act for an assignment to be valid.
  3. For PCT Applications, declarations given as a part of PCT Rule 4.17(ii) submitted to the Receiving Office is taken as proof of right. This is supported by the fact that Section 138(4) of the Patents Act, 1970 clearly lays down that an international application filed under the PCT designating India shall have the effect of filing an application for patent under Section 7 of the Act. Section 7(2) provides for the proof of the right requirement. Therefore, by virtue of Section 138(4) of the Act, a properly filled in international application under PCT is deemed to have complied with the Proof of Right requirement under Section 7(2) and the separate furnishing of proof of right is not required at the time of making the National Application. As far as PCT regulations are concerned, Sections 211 to 212 of the ‘Administrative Instructions under the PCT’ provide for standardized wordings of declarations under PCT Rule 4.17 which is similar to the reading of Form-1. Further, PCT Rule 4.17 read with Rule51bis.2 indicate that such declarations submitted to the Receiving Office will be considered by the Indian office as satisfying the said requirement. The exception to this rule is whereby, if the designated Office doubts the veracity of a PCT Declaration or the indications in the Declaration, it is entitled, under Rule 51bis.2 to require such documents again in the Indian National Phase. Article 27 of PCT also limits the requirements that can be set by a National Office upon entry in the National Phase.

It can be said that The Patents Act, 1970 requires the true and first inventor to be a natural person. Other juristic entities like corporations, institutions and companies can, at best, be an assignee or a joint applicant along with the true and first inventor. Form-1 or assignment document or declarations requires signatures of the inventors(s) to entitle assignees to file the Patent. This requirement is very significant for the purpose of requiring the consent of the inventor so as to protect their interest in the invention and ensure that no application is made in violation of their rights.

 

 

 

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