An application for a patent can be filed by a 'true and first inventor', or the inventor's assignee. In cases where the application is filed by the assignee, the assignee is required to submit a 'proof of right', as per Section 7(2) of the Patents Act, 1970 (the "Act").
The purpose of requiring the consent of the inventor is to safeguard the inventor's interests and ensure that no application is made in violation of their rights. The 'proof of right' is usually in the form of the original assignment, under which the assignee claims their right to make the application. This document serves as proof for the Controller to decide the right of the assignee to file the application.
The strict requirement of 'proof of right' was reiterated by the Intellectual Property Appellate Board(IPAB) in NTT Docomo v. The Controller of Patents and Designs [OA/39/2011/PT/CH], wherein it was held that a 'proof of right' document was required irrespective of the priority patent application having been granted. This was contrary to the earlier presumption that once a priority application had been processed, other patent offices would not demand a copy of the assignment of rights again.
According to Rule 10 of the Patents Rules, 2003 (the "Rules"), the 'proof of right' document must be submitted either along with the application, or within six (6) months after the application is filed in India. The period for filing of the 'proof of right' document may be extended under Rule 138, by a maximum of one month, provided that a request for such extension is filed within six (6) months from the filing of the application.
Documents that comply with the 'proof of right' requirement include:
- Form 1 (Application for Grant of Patent) provided in the Second Schedule of the Act: Form1 contains a declaration, which can be signed by the inventor(s) to declare that they are the true and first inventor(s) and the patent applicant is their assignee or legal representative.
- An original assignment deed executed between the inventor and their assignee:If this document is not available in the original, alternatively, a photocopy of such assignment deed notarized by a public notary or certified by the organization in possession of the original assignment deed (such as, a foreign patent office) may also be submitted as the proof of right. Such an assignment deed should be a global assignment deed covering the earliest filed application and future applications derived from the earliest application.
- A certified or notarised copy of any document evidencing that the inventor was the employee of the assignee at the time of filing the application:A commonly-used document in this category is a certified copy of the "work-for-hire" agreement, where the assignee is the employer/company and the inventor is the employee, and where the agreement terms assign the right to file the application from the employee to the employer.
- PCT national phase applications:If the assignee and inventor in the national phase India application are same as that in the application made under the Patent Cooperation Treaty (PCT), a proof of right document need not be submitted in India, provided a declaration under PCT Rule 4.17(ii) had been submitted before the World Intellectual Property Organisation (WIPO). Also, under PCT Rule 51bis. 2(ii), the designated Office (i.e., the office where the national phase application is being filed)need not seek any document or evidence relating to the assignee's entitlement to apply for the patent, if a declaration to that effect is contained in the request or is submitted directly to the designated Office. There is discretion granted to the designated office, however, if it reasonably doubts the veracity of the declaration concerned.
If there is any change in the assignee or inventor of the PCT application before filing the national phase application in India, the change must be notified by the International Bureau (IB) in Form PCT/IB/306. In the absence of such notification by the IB, the national phase application needs to be filed in India as per the information available with the IB and subsequently an application to record the assignment needs to be filed by the latest assignee.
The situation is slightly different if multiple inventors are located in different parts of the world. In such a case, the Indian Patent Office (IPO) accepts individually signed documents from each of the inventors. If the inventor is deceased, a legal representative of the inventor may file the application or assign their rights to the assignee. Where the assignee derives their title in the application by more than one assignment deed, then all such deeds must be submitted at the IPO clearly setting out the title of the assignee to make the application.
Further, under Section 68 of the Act, for an assignment to be valid, the assignment must be in writing in the form of a document mentioning the terms and conditions of the assignment.
For the 'proof of right' document or any assignment document to be valid under the Indian Law, it is advisable that the document be notarized or apostatized in the country in which the document was executed. However, if duplicate copies are being made in India to be used in various different matters, then the duplicate copies should be notarized in India.
There may be cases where the IPO raises an objection that the date of signature of the inventor on Form-1 is later than the date of filing the application in India. Such an objection may be addressed by submitting that the declaration signed by the inventor on Form-1 was only to reconfirm that the applicant is the assignee of the inventor(s), and accordingly, that when the inventor signed the declaration is not of relevance. It is pertinent to note that the date indicated by the inventor(s) in Form-1 sets out the date of declaration of the fact that the inventors are true and first inventors and that they have already assigned their rights to the assignee (or the applicant).
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.