Complying With The Proof Of Right Requirement For Making Patent Applications In India

In cases where the applicant of a patent application in India is an assignee of the true and first inventor, the applicant is required to furnish a proof of right to make the patent application. In this article, we explore the various documents/legal instruments that may be furnished by the applicant to meet the proof of right requirement of the IPO. Provided below are examples of such documents or legal instruments, the conditions warranting their usage, and the best practices related to the filing of such documents or legal instruments to meet the proof of right requirement.

  1. Endorsement in Form-1: Probably the simplest way of meeting the proof of right requirement is to have the Form-1 executed by the inventors. It is imperative to note here that the Form-1 can be executed in counterparts, in cases where multiple inventors residing at different geographical locations are involved in the invention. The executed Form-1 should be submitted by the applicant either along with the filing of the application or the latest within six months from the filing of the application. In terms of acceptability, the date of execution of the Form-1 could be any date, i.e., either before the filing of the application or after it as well, as it serves as a mere declaration made by the inventors in cases where an assignment is already existing between them and the applicant. However, sometimes there may be an objection on Form-1 that bears an execution date later than the date of filing of the application. Therefore, as a best practice and in order to avoid unnecessary formal objections from the IPO, the executed Form-1 should bear a date that is the same as the date of filing of the application or any date prior to that.

The guiding aid for the evaluation of patent applications – the manual of patent office practice and procedure (MPPP) states that the proof of right requirement can be met by way of an endorsement made by the inventor in the application, i.e., Form-1, or by the filing of the assignment deed existing between the inventor(s) and the Applicant. Taking a detailed look at the relevant column provided in the Form-1 to carry out said endorsement, the Form-1 makes it abundantly clear that mere endorsement of the Form-1 is only a signed declaration by the inventors to mee the proof of right requirement and there need to be a pre-existing assignment between the inventor and the applicant. More specifically, the form states in the relevant column “in case the applicant is an assignee: the inventor(s) may sign herein below ….”, thus clarifying the declaratory nature of the endorsement of Form-1.

  1. Original assignment deed: As is stated in the form for application for grant of patent and is also specified in the MPPP as explained above, an applicant can also submit an original copy of the assignment deed existing between the true and first inventors and the applicant, to meet the proof of right requirement. When using this legal instrument to comply with the proof of right requirement, care should be taken that the assignment deed counts as a valid contract. More specifically, when having the assignment deed drafted and executed, the applicant should ensure that the assignment deed clearly specifies the consideration value or at least mentions that some consideration value has been provided in exchange to the inventor(s) in return for the transfer of right to make the patent application. Furthermore, the applicant should also ensure that the assignment deed is either a global assignment or at least clearly mentions India as one of the countries where the assignee can make the patent application for the grant of a patent for the invention.
  1. Certified or Notarized copy of the assignment deed: In instances where a patent application is filed seeking priority of a previously filed patent application filed in a convention country, a certified copy of assignment issued by the patent office of the convention country can be submitted. Alternatively, as per the colloquial practice, a copy of the assignment deed submitted in the convention country may be submitted by the applicant to comply with the proof of right requirement. As a best practice, the copy of the assignment deed should be locally notarized prior to submission with the IPO.
  1. Employment contract: In instances where the inventor is no longer reachable for the execution of Form-1, an applicant may furnish a copy of the employment contract as proof of right document to meet the requirement. When submitting such a document as proof of right, one should keep in mind that the employment contract would only hold good as long as a clear cause of assignment of IP developed by the inventor to the employer, i.e., the applicant is specified in the employment contract. Also, the employment contract should bear the signature of the inventor, for it to hold good as the proof of right document.

Along with the employment contract, the Patent Office often also demands for an employment certificate which states the inventor’s employment duration with the employer. A possible reason for this demand may be that the employment certificate may help in establishing that the inventor was still employed with the employer when the patent application was made. Therefore, as a safe practice and as a proactive measure, the applicant may also submit the employment certificate along with the employment contract to comply with the proof of right requirement.

  1. Confirmatory assignment: In many instances, the applicant may not wish to file the assignment deed or may not be in a position to file the assignment deed. For example, as such documents are made public, the applicant may not wish to file the assignment deed owing to the confidential monetary clauses, if present in the assignment deed. Another case could be that the original assignment deed may have been inadvertently misplaced. In such cases, to comply with the proof of right requirement, the applicant may file a confirmatory assignment. The confirmatory assignment may be understood as an assignment, executed at a later date, which confirms an earlier made assignment between the parties involved. The confirmatory assignment is to be executed by the parties involved, i.e., both the applicant and the inventors. This serves as an alternate to form-1.
  1. Declaration as to entitlement to file the patent application by applicant, in case of PCT applications: In instances where the applicant has already filed a declaration under PCT Rule 4.17(ii), in respect of a PCT application for which a National Phase application has been filed in India, the applicant may submit a copy of the above declaration with the IPO to comply with the proof of right requirement. However, some of the Controllers at the IPO, despite the above submitted declaration, object that such a declaration does not meet the requirement of proof of right. In such a case, the applicant can leverage the provisions stated under PCT Rule 51bis. 2(ii) to establish their case of compliance of the proof of right. The PCT Rule 51bis. 2(ii) states that the designated Office need not seek any document or evidence relating to the assignee’s entitlement to apply for the patent, if a declaration to that effect is contained in the request or is submitted directly to the designated Office, unless the designated office has reasonable doubts to the veracity of the declaration made by the applicant. Therefore, if no reasonable doubt has been expressed in an objection, it may be countered that the patent office is not justified in objecting to the acceptability of declaration under PCT Rule 4.17(ii).
  1. Affidavits: Referring again to the instance where the inventor is not available for the execution of the Form-1 and if, for any reason, the employment contract or the assignment deed cannot be provided, the applicant may consider filing for an affidavit, declaring his entitlement to file for the patent on behalf of the inventor(s). The affidavit serves as a legal instrument and it is highly preferred that supporting documents be provided along with the affidavit. Such documents could be, a record of attempts, such as e-mails and/or phone calls, made by the applicant to reach the inventor, employment tenure certificate of the inventor, and executed testimonials from other inventors, in case of multiple inventors, etc.. However, owing to the contentious nature of affidavits and the liability on to the officer signing the affidavit, this is the least preferred option of complying with the proof of right requirement.

As the proof of right requirement is a non-discretionary requirement specified in the Indian patent law, the applicants must therefore, ensure compliance to this requirement. With the help of the aforementioned documents/legal instruments and knowledge of the various circumstances surrounding their usage and applicability, an applicant can easily comply with the proof of right requirement for making a patent application in India.

Article by Joginder Singh and Siddharth Sharma, 1st published on Mondaq