Proof of Right for Indian Patent Applications
Section 7(2) of the Indian Patents Act states that where the patent application is made by virtue of an assignment of the right to apply for a patent for an invention, the applicant is required to furnish, either at the time of filing the application or within six months of the date of filing of the application, a proof of right to make the application.
In other words when an application for patent is made in India by anyone other than the true inventor(s), then a proof of right to file the patent application in India is to be established.
Section 68 of the Indian 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.
Practice of the Indian Patent Office:
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.
Different forms of Proof of Right:
Signing of Form 1 by the Inventors: Form – 1 which is the application to file for a patent in India can be endorsed by the inventors assigning their rights in the invention to the applicant.
Assignment Deed: A notarised/certified copy of the assignment deed signed by the inventors assigning the rights in the invention in favour of the applicant.
Proof of right in case of Convention Applications:
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.
Proof of right in case of PCT Applications:
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.
The applicant can show proof of right by obtaining signatures of the inventors in Form 1 endorsing the assignment of rights or by obtaining a notarized/certified copy of the assignment deed.
Deadline for filing proof of right:
The proof of right needs to be filed within 6 months from the date of filing the patent application in India. This period can further be extended by another month provided such request for extension was filed before the expiry of 6 months from the date of filing the application in India.
Consequences for non-compliance:
Non-compliance of this mandatory requirement may result in the Controller of Patents refusing the patent application. It also opens the doors to third parties to initiate proceedings to revoke the patent granted without the proof of right.
Considering the damage that can be caused by not filing proof of right, it is advisable to file the proof of right at the time of filing or within 6 months from the date of filing the application in India even if the same is not explicitly requested by the Indian Patent Office.