Understanding The Proof Of Right Requirement For Making Patent Applications In India

As a quid pro quo for disclosing their innovation, an exclusive right to prevent others from making, using, offering for sale, selling or importing, without proper permission, is granted by the government in the form of a Letters Patent to an innovator of the innovation. This monopoly, granted to the innovator, serves as a rightful reward for their contribution in bringing advancement in the society.

In the existing scheme of things, a majority of these innovations originate from the Research and Development (R&D) labs/units of universities and enterprises, such as Multi-National Companies (MNC). Speaking statistically, as per the last annual report published by the Indian Patent Office (IPO), out of the 48000 patent applications that were filed in India in the year 2017-18, approximately 83% were made by entities other than Natural persons. These entities include startups, small entities, and entities other than startups and small entities, or what in other words are colloquially referred to as large entities.

It is a recognized fact that the innovation happening in these R&D labs and units is done by the researchers, professors, students, employees, scientists, etc, hereinafter “inventor”. In other words, an invention is devised by an inventor or by a group of inventors working together. In return for providing the platform for the inventors to research and develop new inventions, there is often an arrangement, usually in the form of an employment contract, between the inventors and the universities or the enterprises, whereby the university or the enterprise would hold the legal rights to any intellectual property devised by an inventor during their tenure with the university or enterprise.

Once an invention has been conceptualized by an inventor or a group of inventors, the invention is typically assessed internally for its worth and, if determined to be useful, the universities or the enterprises move onto filing a patent application for the invention. It can be clearly established here that the devisor of the innovation, i.e., the inventor, and the filer (applicant), i.e., the university or the enterprise, of a patent application, for the grant of a patent for the invention, are two different entities.

In cases where the applicant of a patent application is different from the true and first inventor of an invention, the Patents Act, 1970, hereinafter “the Act”, requires that a proof of right to make the application be submitted by the Applicant. A probable reason for the aforementioned requirement has been mentioned in the passing in the Ayyangar committee report on patents. The report states that furnishing the proof of right not only helps in safeguarding the interest of the inventor and ensure that no application is made in fraud of his rights, but also helps the controller to decide the right of the applicant to make the patent application. The relevant provisions of the Act relating to the proof of right requirement are discussed below.

As per Section 6 of the Act, an application for the grant of a patent in India may be made by a true and first inventor, i.e., the original inventor, or by an assignee of the true and first inventor, or by a legal representative of a deceased person who was entitled to make such an application. Furthermore, the application for grant of patent may be made either alone or jointly with any other person. In instances where the application is filed by an Applicant who is the assignee of the true and first inventor, Section 7(2) of the Act is invoked. As per Section7(2), the applicant is required to provide the proof of right to make the application, either along with the filing of the application or within a prescribed period. Under the Indian patent law, the prescribed time period to furnish the proof of right is six months from the date of filing of the application. In case of international applications that are filed in India, either by way of the Patent Cooperation Treaty (PCT) or the Paris Convention, said time period is taken from the date of the filing of the Indian Application.

Non-compliance to the aforementioned requirements of the Act on the applicant’s part may be detrimental to the applicant’s interest and entitlement of the patent application. In the worst-case scenario, where a patent has already been granted, the patent may be revoked or transferred. Therefore, it is imperative for applicants like universities and enterprises to bear in mind the proof of right requirement of the Act and duly comply with said requirement.

The provision to establish proof of right in cases where the inventors are not the applicant serves as a valid and useful tool to eradicate the possibility of any discrepancy that may arise as to the entitlement to the patent. The said requirement establishes the inventor’s consent and at the same time also aids the Controller in inspecting and validating the applicant’s claim to make the application on behalf of the inventors. Therefore, the applicants should always adopt careful measures to ensure conformity to this essential provision of the Act.

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