Legal position on ‘proof of right’ in patent applications

By Abhai Pandey and Rajeev Kumar, LexOrbis
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The requirement for filing a “proof of right” with Indian patent applications is debated from time to time and patent controllers have taken different views on it.

The guiding principle for all types of patent applications, whether ordinary applications, convention applications, or national phase applications based on the Patent Cooperation Treaty (PCT), emerges from the provisions of section 7(2) of the Indian Patents Act, 1970.

Abhai Pandey id
Abhai Pandey
Partner
LexOrbis

According to this provision, if the applicant has obtained the rights of invention from the “true and first inventors”, a proof of right is required to be submitted to the Indian Patent Office along with the application, or within six months (as prescribed by rule 10 of the Indian Patents Rules, 2003). Rule 10 provides that in the case of an application under the national phase of PCT, the six months shall be counted from the actual date on which the entry was made in India.

The documents that are needed for the proof of right are prescribed in column 12 of Form 1 (for patent applications) under the second schedule to the rules. Sub-part (i) of column 12 under the heading “Declarations” provides that if the applicant is an assignee, the inventor(s) may sign a declaration provided under that part, or may upload and send, by post or e-mail, a deed of assignment to the patent office. The documents prescribed for proof of right under Indian patent laws are:

A declaration in Form 1 signed by the inventor(s); or

A deed of assignment signed by the inventors in favour of the applicant or an authenticated copy of it.

In addition, as per rules 4.17(ii) and 51bis.1(a)(ii) of PCT Rules, an application under the national phase of PCT in India can also provide and rely upon the declaration filed in the PCT application regarding the applicant’s entitlement to apply for and be granted a patent, as on the international filing date.

Rajeev Kumar id
Rajeev Kumar
Partner
LexOrbis

The position with regards to filing of proof of right documents in a convention application is further explained in sub-part (ii) of column 12 of Form 1 and it provides that in case the applicant in India is different from the applicant in the convention country, then in addition to the proof of right documents established under sub-part (i), the Indian applicant would also be required to submit the declaration provided in sub-part (ii) of column 12. Such a declaration under sub-part (ii) can be signed by the applicant in the convention country, or a deed of assignment from the applicant in the convention country assigning the invention to the applicant in India can be provided.

Which means if a convention application is filed by the inventor(s) in the convention country and the corresponding Indian application is filed by the assignee, then the declaration signed by the inventor(s) in sub-part (i) or deed of assignment by the inventors would suffice.

However, if the applicants in the convention application are two different assignees, then the assignee filing in India would be required to file the declarations under both sub-part (i) and sub-part (ii) of column 12 of Form 1, or the respective deeds of assignment.

With respect to convention applications in which the applicant in the convention country and India are the same, the position was clarified by the Intellectual Property Appellate Board (IPAB) in the NTT Docomo case.

The applicant argued that there was no requirement of filing the proof of right since the applicant in the priority application has already filed the proof and the applicant in the Indian application was the same as in the priority application. The IPAB in that case clarified and directed that the applicant of the Indian application is still required to file proof of right documents under section 7(2) irrespective of the fact whether such proof was established in the priority application.

Under that situation the applicant in India was required to file the proof of right as per sub-part (i) of column 12 of Form 1, or a respective deed of assignment.

Position under Indian Designs Act

Under the Indian design laws, there is no requirement to provide inventors’ details and hence we do not require any signed documents from the inventors. The deed of assignment would be required only where the priority application is filed in the name of the inventors and the corresponding applications are being filed in the name of assignee company to whom the inventors assigned the rights. In such cases, a certified copy of the assignment deed executed by the inventors in the name of the applicant company that was submitted to the design office of the priority application is required.

Abhai Pandey and Rajeev Kumar are partners at LexOrbis.

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