Proof of right requirement in a national phase PCT application: India

We know that a Patent is a territorial right. Patent Co-operation Treaty (PCT) has made it significantly convenient for applicants to file patents globally. It must be noted that there is no such thing as an International Patent. What PCT provides is that it eases the international filing of patent applications. It gives a 30-31 months window to the applicant to file an application for grant of patent in the countries he desires. There are therefore, two phases of a PCT application i.e. International Phase and National Phase. In the International Phase an application is made to the International Bureau (IB) of WIPO, designating countries where patent protection is required. PCT provides that the same application as made to the IB be used by applicant to file application for patent in the National Phase. National Phase requires that the application for grant of patent be filed in all the designated countries separately.

In India, first the applicant is requires to file an application for patent either provisional or complete with the IPO, then only he can file for an international PCT application. After date of filing the application, or the priority date whichever is earlier the applicant gets 31 months to file his international phase application. After international phase application is file, the applicant gets another 12 months period to file for national phase application in the designated countries.

Section 5 of The Patents Act, 1970 (“Patents Act”) requires that an application for grant of patent be filed by a true and first inventor. Generally the inventor is also the applicant, but in some cases it may happen that the inventor and applicant are two different entities. For making an application for grant of patent an applicant must comply with the guidelines of Section 7 of the Patents Act. In other words when an application for patent is made in India by anyone other than the true and first inventor(s), then a proof of right, to file the patent application in India, is to be established. Section 68 of the Patents Act states that for the assignment to be valid, it has to be in writing in the form of a document mentioning the terms and conditions of the assignment.

Section 7 (2) of the Patents Act requires that a proof of right be furnished by the applicant in cases where the applicant is not the inventor. Such situations may arise in case of an employer-employee i.e. the applicant is the employer/company and the inventor is the employee. In such a situation the employer has the right to file a patent, contrary to any contract between them. Another case could be that of a “work-for-hire” agreement, wherein the contract terms assign the right to file a patent to the employer.

In such cases the best proof of right is the assignment deed between the applicant and inventor(s) expressly assigning the right to file a patent to the applicant.

Such proof of right may be furnished by the applicant in the following ways:

  • By way of declaration or undertaking by the inventor i.e. assignment deed; or
  • By way of proof of an employment contract or work-for-hire contract; or
  • By way of application FORM 1 duly signed by inventor; or
  • Copy of any foreign filings which mentions the assignment by inventor. In additional to the above mentioned forms of proof of right, the applicant can show proof of right by obtaining a notarised/certified copy of the assignment recorded with the patent office in the convention country.
  • If the applicant(s) and/or inventor(s) in India are same as that in the PCT application, then there is no need for proof of right. In the event of any change in the applicant(s) and/or inventor(s) of the PCT application before filing the national phase application in India, the said change has to be notified by the International Bureau 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 present assignee.

We see that all these requirements require authorization by the inventor.

However, situations may arise when the inventor is not present or cannot be contacted (in case of differences between him and the applicant or, in case the inventor is no longer in service of the applicant, etc.).

In such a situation what is the remedy for the applicant? How can he furnish the proof of right? What would be the best proof of right if the inventor is not available for assigning the right to file for patent grant in India?

 

Situations may arise when the inventor has assigned his right to file a patent to the applicant but limited the right to file the international application or could have made restrictions for some countries or could have vested with himself the right to file patent in a particular country or could have assigned the right to file patent in only few countries (may be one or more). For example: An inventor assigned the right to file a patent to its employer, a U.S. entity, to file for patent in the U.S. only and vested with himself the right to file a patent in all other countries.

Because of such apprehensions, the Indian Patent Office requires a proof of right along with every national phase PCT application entering India. Prior to 2013, the patent office used to satisfy itself with this requirement if the applicant furnishes any other accepted PCT national phase application. But after 2013, the proof of right requirement is compulsory.

The earlier practice of the Indian Patent Office did not require “proof of right” to be filed when the applicant(s) and/or inventor(s) of the convention application and/or the PCT application are the same in respect of the Indian application. However in the case of NTT DOCOMO Inc vs. The Controller of Patents and Designs the Intellectual Property Appellate Board held that the “proof of right” must be filed for all applications filed in India where the applicants are not the true inventors.

The question that arises is:

If it is not possible to obtain signature of one of inventors because the inventor is retired from applicant company and can not be contacted, how can the applicant deal with this problem to proceed with the national phase application?

We note that the best proof of right under Section 7(2) would be an ‘assignment deed’ duly signed by the inventor. Such deed should provide that the inventor has assigned the right to file for a patent application for his invention to the applicant. The strict requirement of ‘proof of right’ was iterated by IPAB in NIT Docomo v. The Controller of Patent and Design [OA/39/2011/PT/CH]. It is after this case that a ‘proof of right’ is required irrespective of the priority patent application having been granted. Previously, the presumption prevailed that once the priority application had been processed, other patent offices wouldn’t demand production of the same again.

In the present situation, the following documents may be considered by the Indian Patent Office –

  • True copies of assignment deed with authentic signatures and their accurate translations.
  • Copies of foreign application(s) wherein the inventor had assigned the right to file patent application to the applicant.
  • Original notarized declaration by the applicants.

A point to be noted here is that the assignment deed, though for a foreign application, must not expressly limit the power of the applicant to file a patent application in any particular country i.e. there must not be any territorial restrictions.

Section 15 of the Patents Act provides that the Controller should give an opportunity to the applicant to amend his application in case of any defect. This was reiterated by IPAB in the NIT Docomo case as well. Therefore, the Controller in such cases cannot prima facie reject the patent application. He shall give an opportunity of hearing to the aplicant. Further, if the application reaches a hearing stage, the applicant may contend that the inventor is unavailable. To further support his arguments the applicant may also furnish the following proofs in addition, if required by the Controller to corraborate the evidentiary value of the abovementioned proofs –

  • Employment contract with the inventor(s), highlighting the IPR clause, if any. (Such as – All IP generated by the employee in the course of his employment shall belong to the Employer). Such a clause would act as an assignment deed in itself and can be furnished along with FORM 1.

The fact that an invention of an employee belongs to the employer depends on the contractual relations, express or implied, between the employer and employee. This was articulated by Lord Reid in Patchett v Sterling Engineering Coy Ltd [(1955) 72 RPC 50, (HC), at p 58]:

“… No doubt the respondent was the inventor and in the ordinary case the benefit of an invention belongs to the inventor. But at the time when he made these inventions he was employed by the Appellant as their Chief Designer and it is, in my judgment, inherent in the legal relationship of master and servant that any product of the work which the servant is paid to do belongs to the master. I can find neither principle nor authority for holding that this rule ceases to apply if a product of that work happens to be a patentable invention. Of course, as the relationship of master and servant is constituted by contract, the parties can, if they choose, alter or vary the normal incidents of the relationship, but they can only do that by express agreement or by an agreement which can be implied from the facts of the case.”

Through the employment contract the applicant may also argue that it is a contract of service rather than a contract for service and therefore the inventor was not an independent contractor.

  • A proof showing that the invention was invented while the inventor was in service of our client. Through this the applicant may afford a ‘Shop Right’, claiming that the invention was invented by the inventor while he was working within the scope of his employment, using the applicant’s equipment, or inventing at the applicant’s expense.

Shop right is a common law doctrine founded in equitable principles that allows an employer to use the employee’s invention without payment to the employee if that invention was made using the employer’s time, materials, facilities, or equipment. Lariscey v. United States, [949 F.2d 1137 (Fed Cir. 1991)].

Therefore, such an application may be sufficient for providing proof of right under Section 7(2) r/w Section 6 (b) of the Indian Patent Act, 1970.

Points to remember

  • The right to the invention must have been assigned without any territorial restrictions.
  • Procedure is not very clear with respect to the requirement of documents for establishing ‘proof of right’ and we note that in case of unavailability of the inventor, the assignment deed of foreign application duly signed by the inventor and notarized, may suffice the requirement.
  • The application shall not be rejected prima facie and the controller, if not satisfied with the said documents, shall afford the applicant an opportunity of being heard.
  • All these documents are required to be filed in original.
  • Section 138 (2) of The Patents Act read with Rule 20 (3) of the Patent Rules, 2003 require that in cases where any document in a convention application is in a foreign language, a translation into English of the said document, shall be furnished when required by the Controller. Further, such translation shall be duly verified and signed by the applicant. Therefore, the Controller may require an English translation of copies of original documents to be filed and a certificate of translation.

The post first appeared on my LinkedIn page here.

Siddhant Sharma

Siddhant is a Patent and Intellectual Property lawyer. He finds joy in exploring and writing about niche areas of law. He is finding better ways to describe the patent profession to a five-year old and a sixty-five year old.

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