The IPAB in its order dated October 27, 2020 in the matter of Dow AgroSciences LLC vs Indian Patent Office provided clarity regarding the proof of right requirements for PCT national phase applications. The IPAB in the order held that for PCT national phase applications where the inventor and the assignee are same as in the PCT application, there is no need for a separate proof of right and a PCT declaration under Rule 4(ii) can be considered as a proof of right.
According to Section 6 of the Patents Act, an application for a patent can be made by a true and first inventor, an assignee of the inventor, or a legal representative of any deceased person who immediately before his death was entitled to make such an application. Further, in cases, where an application is made by an assignee of the true and first inventor, according to Section 7(2) of the Act, the applicant is required to furnish a "proof of right" within six months from the date of filing. In case of a Patent Cooperation Treaty (PCT) national phase application, a separate 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). This was reaffirmed by the IPAB in its order dated October 27, 2020.
Facts of the case
The Appellant Dow AgroSciences LLC, referred to as DOW hereinafter, filed a PCT national phase application 8373/DELNP/2014 on Oct 08, 2014. It shall be noted that, during the filing of the national phase application, the Appellant submitted the PCT document - PCT Declaration under Rule 4.17(ii) supporting the 'Applicant's entitlement to apply for or be granted a patent', thereby complying with the proof of right requirement. However, in the first examination report (FER) dated June 20, 2018, the Respondent (Patent office) raised an objection that proof of right has not yet been filed according to Section 7(2) of the Act. The Appellant responded by pointing out that a declaration under Rule 4.17(ii) has been filed in place of proof of right.
Despite this submission, the Respondent raised the same objection in the hearing notice. Once again the Appellant responded by pointing out Rule 51bis 2(ii) of PCT guidelines which states that "a designated office shall not require any document/evidence for applicant's entitlement to apply for Patent, if declaration under Rule 4.17 (ii) is complied with PCT request, unless, it may reasonably doubt the veracity of the declaration, it is humbly submitted that the said declaration should be sufficient and no further evidence/document may be required of the applicant in this context."
The Respondent, on Jan 30, 2020 issued a decision rejecting the application on the ground of non-filing of proof of right. In the decision, the Respondent cited an earlier order passed by IPAB in NTT DoCoMo Inc. v Controller of Patents and Designs to support the decision. Further, the Appellant made an appeal with the IPAB under Section 117A of the Act against the decision of the Respondent.
Findings and Inferences
The IPAB after examining the appeal, listening to the arguments and analyzing the facts and rules set forth in the PCT treaty and Indian Patents Act, pointed out that the case (NTT DoCoMo Inc. v Controller of Patents and Designs) under reference was based on different facts. The petitioner therein had contention that they had preferred a conventional application which is governed by section 135 of the Patents Act, 1970 and as per section 135, it is clear that section 6 is applicable only to ordinary application and not to conventional applications. Further, the board pointed out that no indication was available to suggest that the Respondent at any point of time had shown a reasonable doubt on the veracity of the indications or declaration concerned. There was no objection on its format either. In case of any doubt on veracity of the declaration, the Respondent could have required any further document or evidence to substantiate the contention of the appellant, in accordance with Rule 51bis.2 of the Regulations under Patent Cooperation Treaty (PCT) but no such finding were available on records. While stating that the Respondent did not take into account the comprehensive look on the legally accepted norms by which the requirements of filing proof of right could be satisfied, it showed utter obstinateness on the part of the Respondent. Upon making these observations, the board set aside the decision issued by the Respondent and directed the Respondent to grant the patent to the Appellant.
There are few key takeaways from the order issued by the IPAB. Firstly, it is clear from the order that the furnishing of PCT declaration under Rule 4.17(ii) for a PCT national constitutes to proof of right. Therefore, for PCT national phase applications there is no need to submit the proof of right as the declaration under Rule 4.17(ii) would suffice. This negates the need of additional documentation work involved in preparing and filing the proof of right. Secondly, the order also provides a clear cut guidelines to the patent office that if the patent office has reasonable doubt on the veracity of the indications or declaration, it may raise it with the applicant and may further ask the applicant to provide any document or evidence to refute the patent office's contention. This observation provides the applicant a chance to make necessary submissions to counter the patent office's contention.
Conclusion
The important thing to be noted here is that, the applicant shall submit a PCT declaration under Rule 4(ii) and need not submit a proof of right only in cases where the assignee and the inventor in the national phase application is same as that in the international application. In a situation where there is a change in the assignee or the inventor after filing the international application and before filing the national phase application, a notification issued by the International Bureau through Form PCT/IB/306 denoting the change in the assignee or the inventor, a form requesting change in the applicant of the national phase application, and a separate proof of right shall be submitted to the patent office. Further, in a situation where the International Bureau has not issued a notification issued by the International Bureau through Form PCT/IB/306 denoting the change in the assignee or the inventor, the applicant should file the national phase application in the name of original assignee and later should submit a form requesting change in the applicant of the national phase application and a separate proof of right.
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