Nuances of complying with proof of right requirement in India

In India, a patent application can be filed by either inventors or their assignee, e.g., a company or an institute. When a patent application is filed in the name of an assignee, a proof of right to file the patent application needs to be submitted. The proof of right can be submitted either along with the patent application or within six months from the date of filing of the patent application. When the proof of right is not filed within the prescribed time limit, Controller who is an officer senior to Examiner may ask to comply with the proof of right requirement at the time of examination. However, at that time, a petition along with the prescribed fee and reasoning for the delay needs to be submitted to get the delay condoned subject to the discretion of Controller.

One example of the proof of right is an original copy of the assignment deed executed between the inventors and their assignee. Alternatively, a photocopy of such assignment deed which is notarized by a public notary or certified by an organization, say a foreign patent office such as USPTO, in possession of the original assignment deed may be submitted as the proof of right. The assignment deed may be a global assignment deed covering the earliest application and future applications derived from the earliest application in the same or other jurisdictions. Alternatively, a local assignment deed specific to Indian jurisdiction may be submitted to comply with the proof of right requirement. However, an assignment deed having a clause of assignment only for foreign jurisdictions, say the United States or Europe, cannot serve as the proof of right for the Indian application, i.e., the Indian jurisdiction must be explicitly or implicitly covered in the assignment deed for its applicability as the proof of right in India. Further, the assignment deed must be executed before the filing of Indian application; otherwise, it cannot be considered a valid proof of right.

The Indian patent law also provides a unique way of establishing the poof of right. Indian patent application is always filed with Form-1 which is basically a formal application for the grant of patent. Form-1 has a provision for a declaration which can be signed by all the inventors to declare that they are the true and first inventors and the patent applicant is their assignee. It is pertinent to note here that the signing of the declaration on Form-1 is sufficient to establish the poof of right, but it is not an actual assignment of rights. In other words, for inventors to rightly declare on Form-1 that applicant is their assignee, an assignment deed between the inventors and the assignee must exist before the filing of the Indian application. The benefit of establishing the proof of right by way of submitting a signed Form-1 is that the original/notarized/certified copy of assignment deed which sometimes might not be available or may contain some confidential information is as such not required to be submitted to the Indian patent office (IPO).

There have been instances where the IPO has objected that the date of signature of the inventors on Form-1 was later than the filing date of the application. The objection is as such not maintainable because the declaration signed by the inventors on Form-1 does not amount to the assignment of rights but rather only reconfirms that the applicant is the assignee of the inventors. Therefore, legally it should not matter as to when the inventors have signed the declaration on Form-1 rather what matters is whether the applicant had the right to file the application at the time of filing. Given a possibility that such an objection may be raised, the most practical way to avoid the objection in the first place is that the date of application is mentioned in the Form-1 at the declaration section instead of the date of signature of inventors.

In cases, where the objection has been raised, there are two ways to overcome the objection. One way is to argue based on the legal position as elucidated above and request the Controller to withdraw the objection on the ground that the date indicated by the inventor in Form-1 is not the date of assignment of rights in favor of the applicant but rather is the date of declaration of facts that the inventors are true and first inventors and that they have already assigned their rights to the applicant. However, this argument may prompt the Controller to ask for a copy of the assignment deed which is executed before the filing date in India to verify the correctness of declaration made in Form-1. Another way to overcome the objection would be to file fresh Form-1 duly signed by all the inventors where the inventors mention the filing date in India as being demanded in the objection. In that way, the Controller would not be in a position to ask for a copy of assignment deed or any other document to establish the “proof of right”. However, this option can be exercised only if all the inventor(s) in the application are still accessible. Sometimes inventors might not be available to sign Form-1 and assignment deed may also be unavailable. In such cases, a general employee-employer agreement, which is signed by inventors at the at time of joining an organization and which is having a clause for by-default assignment of all IP rights, may be submitted as the proof of right. In a worst-case scenario, if the employee-employer agreement is also unavailable or does not talk about the assignment of IP rights, the proof of right as the last option may be established by way of an affidavit subject to the discretion of Controller.

Many jurisdictions do not demand the proof of right from applicants. However, India is one of those jurisdictions where patent applicants need to submit the proof of right when inventors and patent applicant are different. The Indian Patent law provides a variety of options and a period of six months from the date of filing to comply with the proof of right requirement. Initial non-compliance with the proof of right is not really fatal for the patent application and can be course-corrected at the time of examination in most cases.

Nuances of Complying with proof of Right Requirements in India by Joginder Singh

Article was published in Lexology

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