India: Proof Of Right For Filing Patent Applications In India

Last Updated: 8 January 2015
Article by Krishna & Saurastri Associates

When an application for a patent is made at the Indian Patent office ("IPO") by virtue of an assignment of the right to apply, the IPO requires the submission of the proof of right. It has been observed that most applicants did not follow the practice of filing the proof of right and generally, no objections were raised by the IPO especially in cases of Convention applications

However, the IPO raised an objection regarding the proof of right in the examination report of Application No.794/CHE/2006 and it was held that the applicant had failed to fulfill the requirements of the Indian Patents Act, 1970 ("the Act") by not obtaining the signatures from the inventors on Form 1 or by not filing the assignment deed from the inventors or any other documents in support of their right to make the application in India. The order was appealed and the Intellectual Property Appellate Board (IPAB) in its order of 28th October, 2013 in NTT DoCoMo v Controller of Patents held that the applicant had not submitted the proof of right to make the application for a Patent. A copy of the order can be found here.

The IPAB order seems to be in accordance with Chapter 3 of the Manual of Patent Practice and Procedure, 2011 ("the Manual") which mentions-

"Wherever, the inventor(s) is/are not the applicant, a proof of right to apply by way of an endorsement in the Application form (Form 1) or an assignment deed shall be submitted."

In case, the Applicant has not furnished such proof of right, the Applicant could expect to be informed about it by the IPO, since the Manual mentions "...the Office checks for proof of right to file the application. If the proof of right is not filed along with the application, it shall be filed within a period of six months from the date of filing of the application. Otherwise, the applicant shall file the same along with a petition under Rule 137/138".

Furthermore, in some instances, the applicant may receive an objection regarding the proof of right along with the First examination report (FER) and the same would be required to be submitted within twelve months from the date of receipt of the objection and a petition under rule 137/138 of the Patents Rules, 2003 ("the Rules") would not be acceptable.

The Controller's decision of 7th February, 2013 in the matter of Application No. 6734/DELNP/2006 provides guidance in such situations wherein an assignment was filed along with a petition for condoning the delay for submitting an assignment. The assignment along with the petition was rejected since the same was barred by limitation as is specified in Section 21 of the Act.

It would also be practical to evaluate the options available wherein the Applicants have not submitted the proof of right within six months from the date of filing the application with the IPO, and when the IPO has also not required the applicant to submit the proof of right. The issue of non filing of the proof of right due to omission of inventor's signatures would be considered a procedural irregularity and could be condoned since the same would be within the powers of the Controller under Rule 137 of the Rules.

The Applicant could also be faced with a situation wherein the Form 1 filed with the IPO did not include the signatures of the inventors. However, the Patent was granted by the IPO without any objection regarding the same. In such cases, the Applicant may wish to know whether such a mistake could be rectified after the grant, especially in view of the fact that one of the grounds for revocation of the Patent includes that the Patent was granted on the application of a person not entitled under the provisions of this Act to apply. It seems that such a mistake can be rectified at a later stage. In All India Reporter Ltd. And Anr vs. Ramchandra Dhondo Datar (AIR 1961 Bom 292), the Bombay High Court held that the absence of signature or verification in the plaint can be cured even at the appellate stage of the suit and such correction will take effect from the date on which the original suit was filed. This decision has also been referred to in Vidyawati Gupta and Ors. vs. Bhakti Hari Nayak and Ors. (AIR2006SC1194), where the Supreme Court reiterated that the removal of defect in filing the plaint relates back to the date of filing the plaint. The fact that these are established principles as far as the civil matters are concerned and would also be applicable to Patent matters has been addressed by the Delhi High Court in Tianjin Dishili Investment Vs Union Of India (W.P.(C) No.5633/2011), which mentioned that errors of similar nature are merely an irregularity and do not affect the institution of a proceeding. It was mentioned that there was no reason for a more stringent view be taken in the proceedings under the Act especially when no prejudice is shown to have been caused to anyone.

Therefore, the issue regarding the proof of right seems to be a non-compliance of a procedural formality and may lead to disastrous consequences.

The issue of the proof of right can be overcome by submission of an executed Form 1 or by the submission of an assignment. It is expected that a certified copy of the employment agreement stipulating that the rights to the Intellectual Property including the rights to file an application for a Patent are assigned to the employer, may be acceptable as the proof of right. It is also expected that the signed invention disclosure form acknowledging the obligation to assign any rights, title and interest in the invention to the employer could be used as evidence of the assignee's right to prosecute the Patent application. It would be interesting to observe the further developments in law regarding the proof of right.

Jurisdiction of Court in a Composite Suit

In a recent judgment pronounced by the Hon'ble Supreme Court in M/s. Paragon Rubber Industries Ltd. Vs. M/s. Pragathi Rubber Industries, the Hon'ble Court decided the controversy relating to Composite Suit i.e. suit having multiple cause of actions. Though, the present case is decided under the erstwhile Trade & Merchandise Marks Act, 1958. The judgment is still relevant for enforcement of the IP rights as it discusses about the proper forum for the enforcement of the IP Rights. A copy of the judgment can be found here.

Facts

In the year 2001, the Plaintiff i.e. M/s. Paragon Rubber Industries Ltd. who is located in Kottayam filed a suit against the Defendants i.e. M/s. Pragathi Rubber Industries, who are located in Jallandhar, Punjab at District Court, Kottayam, Kerala claiming reliefs under the Copyright Act, 1957 and the Trade & Merchandise Marks Act, 1958. The Defendant filed an application for rejection of the plaint for want of territorial jurisdiction. The learned District Judge dismissed the application with the observation that issue of jurisdiction will be decided at final stage of the suit. The Defendant filed a Civil Revision Petition before the Hon'ble High Court of Kerala; vide its order dated June 16, 2004, the Hon'ble High Court allowed the revision petition and directed the learned judge to decide the issue of the territorial jurisdiction afresh. In view of the directions, the learned District Judge treated the issue of jurisdiction as preliminary issue and held that it has jurisdiction to entertain the suit in view of Section 62(2) of the Copyright Act, 1957. The Defendant challenged the aforesaid Order in the High Court of Kerala. The Hon'ble High Court held that the instant composite suit encompassing the Copyright Act, 1957 and Trade & Merchandise Marks Act, 1958 would not be maintainable for lack of jurisdiction under the Trade & Merchandise Marks Act, 1958 (in spite of jurisdiction under the Copyright Act, 1957), the High Court set aside the aforesaid order passed by the learned District Judge. However, the Plaintiff was given the liberty to amend the plaint. Both the Plaintiff and the Defendants appealed against the Order of the High Court of Kerala.

Issue

Whether a court has jurisdiction to entertain cause of actions in terms of both the Copyright Act, 1957 and the Trade & Merchandise Marks Act, 1958 when the court only has jurisdiction to entertain one cause of action in terms of Section 62(2) of the Copyright Act, 1957?"

Plaintiff's Contention:

1. The suit is maintainable in its form before the learned District Judge, Kottayam for the violation of the copyright in view of Section 62(2) of the Copyright Act, 1957.

2. High Court has wrongly held that the composite suit claiming reliefs under Copyright Act, 1957 and Trade & Merchandise Marks Act, 1958 would not be maintainable.

Defendant's Contentions

1. It is admitted by the Plaintiff that neither the Defendant's goods are available in Kottayam, nor the Defendant resides or carries on business within the jurisdiction of the District Court, Kottayam.

2. The present suit shall be governed as per the provisions of the Trade & Merchandise Marks Act, 1958 and not Trade Marks Act, 1999.

Observations:-

It is observed by the Hon'ble Court that even though the Plaintiff was aware that the District Court Kottayam will have no jurisdiction under the Trade & Merchandise Marks Act, 1958; but tried to camouflage the same by confusing it and mixing it up or intermingling it with the relief contained under the Copyright Act, 1957. From the averments made in the Plaint, it is apparent that the Plaintiff had filed a composite suit and such a suit is not maintainable unless the court has jurisdiction to entertain the suit in relation to the entire cause of actions and the entire reliefs claimed.

Judgment

Order II, Rule 3 of the Code of Civil Procedure, 1908 contemplates uniting several causes of action in the same suit. The cause of action for infringement of copyright and the cause of action for infringement of trade mark or a cause of action for passing off are different. Even if one cause of action has no nexus with another, indisputably Order II, Rule 3 of the Code will apply. However, the application of Order II, Rule 3 of the Code will not ipso facto confer jurisdiction upon a Court which it otherwise does not enjoy. In other words, Order II, Rule 3 will not confer a Court with jurisdiction under 1958 Act when the Court does not enjoy such a jurisdiction. A composite suit is not maintainable unless the Court enjoys the jurisdiction to entertain the suit in relation to the entire cause of action and the entire relief. Considering Dhodha House Vs. S.K.Maingi (2006) 9 SCC 41 and Dabur India Ltd. vs. K.R. Industries (2008) 10 SCC 595; the Hon'ble Court held as follows "....for the purpose of invoking the jurisdiction of the court in a composite suit, both the causes of action must arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues. However, the jurisdiction cannot be conferred by joining two causes of action in the same suit when the court has jurisdiction to try the suit only in respect of one cause of action and not the other." The Hon'ble Court further held that while enacting the erstwhile Trade & Merchandise Marks Act, 1958, the Parliament was aware of the provisions of the Copyright Act, 1957. The Parliament did not choose to provide a similar provision in 1958 Act. Such an omission was a conscious omission and was, therefore, clear and explicit. On the other hand, while enacting the Trade Marks Act, 1999, the Parliament provided for an additional forum by enacting Section 134 (2) of the Trade Marks Act. It is a settled position that the Court shall not readily presume the existence of jurisdiction of a court which is not conferred by the statute. The Instant Judgment held that the Plaintiff could not take advantage of Section 134(2) of the Trade Marks Act, 1999. [Although, the 1999 Act was enacted on 30th December, 1999, the same came into force on September 15, 2003. Since the suit in this case was filed on March 19, 2001, it was adjudicated under the erstwhile Trade & Merchandise Marks Act, 1958].

Comments

The judgment reiterates the old principle of law that a composite suit will not entitle a Court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise, as the law is well settled that the decree or judgment passed by the court having no jurisdiction to entertain the same shall be nullity. The judgment is relevant even in present scenario as the remedy of passing off under the Trade Marks, 1999 can be availed only after complying with the provisions of Section 20 of the Code of Civil Procedure, 1908, otherwise the composite suit of infringement and passing off cannot be availed by filing the suit under the provision of Section 134 of the Trade Marks Act, 1999.

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