In patent law, "wrongful obtainment" describes a situation where a person other than the actual inventor obtains patent rights to the invention, in whole or in part. Wrongful obtainment may occur where, after hearing or learning of the invention, a person files a patent application in that person's own name, rather than in the name of the true inventor. As a matter of substance, wrongful obtainment is a troubling and complex area of patent law because it affects the legitimacy of the patent system and the rights of the true inventors. Wrongful obtainment has been discussed in a wide range of legal contexts, but how it is recognised in Indian patent law remains specious and under-developed.
Understanding Wrongful Obtainment Under Indian Patent Law
In India, the Patents Act, 1970 does not contain a formal definition of "wrongful obtainment", which leaves this to be determined by interpretation by courts. However, the first circumstances above makes it clear that the first person filing a patent application is priority, and will have priority even if they are not the true and first inventor. This principle leads to wrongful obtainment if a person improperly claims an invention that belonged to somebody else. Wrongful obtainment becomes relevant when a third party is shown a disclosure of an invention under conditions of confidentiality or for other reasons, and that third party files for a patent without the knowledge or consent of the true inventor. Such actions can deprive the true inventor of their patent rights, and calls into question the integrity of the patent system.
Challenges in Adjudicating Wrongful Obtainment
One of the main issues with wrongful obtainment claims is the difficulty in establishing the initial ownership of the invention. While the patents Act assumes that the person filing the patent is the true inventor, who has a right to patent the invention - until this presumption is rebutted - it is necessary to prove to a legal degree that this person is the 'true and first inventor.' Section 6 of the Patents Act provides that "the true and first inventor" has a right to patent an invention. However, the method of determining which inventive party has this right is often rather ambiguous. Allegations and disputes regarding wrongful obtainment, especially when the parties involved come from different backgrounds and countries, are rarely considered in litigation - if they are litigated at all, it will be in significantly limited frameworks. In addition to all of this, the Indian patent system does not provide any prescribed means or methods for adjudicating wrongful obtainment. The Patent Office and Courts are forced to rely on general principles of law to conclude disputes about wrongful obtainment. This often leads to inconsistent rulings and lessens certainty for parties involved in wrongful obtainment claims.
A Proposed Framework for Wrongful Obtainment
The basic steps for examining such claims will need to be clear and methodical in the face of these difficulties. By reference to UK case law and the statutory process provided in Indian law, a framework for a test on wrongful obtainment could be broken down into four steps:
Establish familiarity with the inventive concept of the invention: The first step is to identify the inventive concept of the patent in question, with a proper examination of the patent claims and specifically the nature and scope of the actual invention in regard to the claims made in the application for patent.
Trace back the inventive concept to the true inventor(s): the second step is to trace the inventive concept back to the true inventor or inventors. This step should be done without any assumptions in favour of the applicant and the true inventors must be identified based on evidence such as research data, lab notebooks and the like.
Examine ownership changes from assignment or contract: The third step addresses how ownership of the invention may have changed, especially in the presence of an assignment or contract. It's important to determine if there were any legal agreements in place that assigned the rights to the invention from the true inventor to the applicant, and if all of these agreements were properly executed.
Establish a breach of law or fraud: This final step, which will require, an analysis of wrongful obtainment, was to establish if there was a breach of law or whether fraud was committed. In Markem Corp v Zipher ltd this step recognises that wrongful obtainment claims may require the application of other legal principles, like breach of contract or breach of confidentiality, in order to establish the fact the applicant was not entitled to the patent.
Legal and Policy Considerations
Several legal and policy issues arise from the implementation of the proposed test for obtaining a patent by wrongful means. One issue is the burden of proof. In the test's third and fourth steps, which assess contract interpretations and fraud allegations, the Patent Office will address issues beyond patent law. The Patent Office may not actually be capable of handling those issues if they involve issues of contract or breach of confidence.
The question of whether wrongful obtaining involves having to prove fraud or illegality is a policy issue. The Indian Patent Act uses "wrongful" in terms of obtaining, but it is unclear if this suggests fraudulent or illegal conduct. As per the discussion of case law in the UK, it is possible to have wrongful obtaining without the links to fraud or breach of contract. This possibility adds additional complexity to the issue.
Conclusion
India's patent law regime needs to create clearer guidance for claims of wrongful obtainment. The Patents Act, 1970 has no provisions that specifically address the issue of wrongful obtainment. The absence of a specific provision can allow a party to challenge the original and rightful owner, further pushing the boundaries of India's patent system.
The test proposed is complicated in a number of ways but, with the advancement of both legal principles and policy considerations, may provide a balanced way of addressing wrongful obtainment claims. This test accomplishes a more logical and fair hearing of claims of wrongful use/obtaining. It promotes fairness in the awarding of patents, since one to whom a patent is originally granted ought to have a patent, while also ensuring that one person does not misappropriate a patent that ought to belong to someone else.
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