India: Entitlement To Apply For And Be Granted A Patent

Last Updated: 13 March 2017
Article by Suchi Rai Singh

Most Read Contributor in India, July 2018

Who under the Indian Patents Law is entitled to apply for a Patent?

In India, a person to be eligible to file an application for a patent should either be the "true and first inventor" of the invention or an assignee or legal representative / heir(s) of the "true and first inventor". An eligibility criterion for persons filing Patent Application in India is provided under1 Section 6 of Patents Act, 1970 (the Act).

Proof of Right to apply for a patent in India:

An assignee of the true and first inventor is eligible to file a patent application for patent in India, provided that the requirement under2 Section 7 of Act to submit the "Proof of Right" document is duly met. Additionally, where an application for patent is made by an assignee, there is a requirement to submit a declaration

mentioning the name of the inventor(s) claiming to be the true and first inventor(s).

Both Sections 6 and 7 of Patents Act, 1970 mention that the person entitled to apply for a patent shall be the true and first inventor of the invention.

First filing:

Considering a hypothetical situation wherein, two genuine inventors working independently and unaware of each other's work, invent on the same concept and involving the same technical advancements on an invention and proceed with filing a patent applications respectively in India. One of the inventors chooses to file a provision application in India immediately when the scope of the invention was ascertainable, whereas, the other inventor chooses to wait for some detailed results and drafting of the specification and files an application for patent at a later date with complete specification and claims. In such a scenario, both the inventors are true and first inventor, however, one of them is the "first filer". This "first filer" in the given facts of the case gets an earlier priority over the subsequent filer, and as per3 Section 13 of the Act, the patent application filed first on an same inventive concept gets the priority over the application filed thereafter. Accordingly, the subsequently filed application, although filed along with the complete specification, is anticipated by the "first filed" application in India. In other words, when two inventors file their respective patent applications on the same inventive concept, as per Section 13 of the Act, the application filed first will get the priority and the subsequently filed application will be considered as anticipated even if the first filed application is not published by the Patent Office at the time of filing of the subsequent application.

In addition to Section 13,4 Section 25 of the Act also has the provision to oppose the application for patent on the ground that the invention was already claimed in a specification which was filed earlier then the patent application which claims the same subject matter and filed later on.

Accordingly, both Section 13 and Section 25 support the concept that the first filer gets the priority and hence a grant of patent over the invention.

"Wrongful obtaining" of the invention:

Considering a hypothetical situation wherein an inventor (the true and first inventor) is deprived of his right to file the application for patent by some other party who learnt about the invention from the actual inventor. This other party, upon learning about the invention from the first inventor under confidentiality restraints, immediately files an application for patent in India in his own name. As per Section 13, this person by being a first-filer would get priority and may get the rights over the patent wrongly appropriated in his own name. In such a scenario, the true and first inventor has the remedy under the law to oppose the application for patent under5 Section 25 of the Act on the ground that the invention was "wrongfully obtained" from the true and first inventor. In such a situation, complete data of research for the invention and other relevant evidences can be submitted to protect the rights in the invention of the true and first inventor. Further, a similar ground is also available for revocation of patent under6 Section 64 of the Act.

Concluding the above discussion, it is established that by filing an application for patent first (as soon as possible), the true and first inventor or his assignee can secure its patent. However, in case any person "wrongfully obtains" an invention from the true and first inventor and manages to file first to wrongly register a patent in his name, such persons (wrongful obtainers) can be checked under the relevant Opposition and Revocation provisions of the Act.

Footnotes

1 Section 6 in The Patents Act, 1970:

Persons entitled to apply for patents. -

  1. Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,-
    1. by any person claiming to be the true and first inventor of the invention;
    2. by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
    3. by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
  1. An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

2 Section 7 in The Patents Act, 1970

Form of application. -

(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.

(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.

3 Section 13 in The Patents Act, 1970:

Search for anticipation by previous publication and by prior claim.-

(1) The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification-

(b) is claimed in any claim of any other complete specification published on or after the date of filing of the applicant's complete specification, being a specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date.

4 Section 25 in The Patents Act, 1970

Opposition to the patent. -

(c) that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after priority date of the applicant's claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant's claim;

5 Section 25(1)(a) in The Patents Act, 1970

Opposition to the patent. –

(a)that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;

6  Section 64(1)(c) in The Patents Act, 1970

Revocation of patents. -

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, [be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court] on any of the following grounds that is to say-

(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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