Section 6 of the Patents Act, 1970, states that an application for patent can be made, either alone or jointly, by a true and first inventor, an assignee of the inventor, or a legal representative of the deceased person.
When an application for a patent in India is filed by an assignee of the true and first inventor i.e., person other than the true and first inventor, then the assignee is required to submit a 'proof of right', as per Section 7(2) of the Patents Act, 1970. The section states, "where the application is made by the virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application".
Section 7(2) of the Act read with Rule 10 of the Patent Rules states that a proof of right to make the application should be furnished with the application, or within a period of six months of filing the application. Under Rule 138, maximum of one month extension can be given for filing Proof of right if the request for such extension is made within six months of the filing of the application.
Proof of right is necessary to safeguard the interest of an inventor. It gives the applicant or the assignee the right to apply for and be granted a patent.
To furnish Proof of Right requirement, following documents may be submitted:
- Form 1: It contains a declaration which can be signed by the inventor(s) to declare that they are the true and first inventor(s) and the applicant is their assignee or legal representative.
- Original assignment deed: An applicant (assignee) can submit the original assignment deed existing between the true and first inventor and the applicant (assignee) to meet the proof of right requirement. Further, in conventional applications, the applicant may submit a certified copy of assignment deed submitted at the patent office of the convention country.
- PCT national phase applications: If a declaration under PCR
Rule 4.17(ii) has already been filed by the applicant, in respect
of a PCT application, then, a proof of right document need not be
submitted for national phase filing in India. The applicant may
submit a copy of the above declaration with the IPO to comply with
the proof of right requirement.
This can be seen in the case of DOW AGROSCIENCES LLC v. THE CONTROLLER OF PATENTS where the applicant furnished the Proof of right requirement by submitting the PCT Declaration under Rule 4.17(ii)1. The controller rejected the application owing to the non-compliance of Proof of right. Thereafter, the Applicant filed an appeal in IPAB which gave a landmark ruling in the matter. IPAB held that if a patent applicant entering India through the national phase route has submitted a PCT Declaration under Rule 4.17(ii), then it is sufficient to establish Proof of right. - Employment contract: If in case where inventor is not available, an applicant may submit a certified copy of the "work-for-hire" agreement or employment contract, where the applicant or assignee is the employer/company and the inventor is the employee, and where the agreement terms clearly state that all the IP generated by the employee during employment shall belong to the employer2.
Proof of right is a mandatory requirement as per the Indian patent law. Non-compliance may result in application getting refused or in case, where patent has already been granted, it may get revoked or transferred. Therefore, applicants must comply with this requirement.
Footnotes
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.
We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.