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One of the main requirements, while filing a patent is to ensure that the patent applicant has the right to claim the invention which is the subject of the patent application. Most patent applications are usually filed by a company which has funded the research into the invention after the inventors of the patent application have assigned the right to file such an invention to the company. In fact Section 7 of the Patent Act, Rule 20 of the Patent Rules and Form 1 require the patent applicant to clearly establish that the inventors have assigned, to it, the right to file the patent application for the claimed invention. To this end, Form 1 requires the signatures of all the inventors, along with accompanying evidence of contracts between the inventors and the company.
The Form 1, filed by Sugen, for its Sunitinib patent, is available over here and as you can see, the Form 1 does not bear the signature of a single inventor. It has the signature of only the patent agent in question. I do not understand how a multinational pharmaceutical company can file a patent application without even establishing its title to the invention in question. Was this a case of negligence? By whom?
Technically, if Sugen cannot establish a clear title to its invention, it can be stripped of its final patent. Although Cipla does not appear to have raised this ground in its post-grant opposition, whichultimately led to the revocation of Sugen’s patent for Sunitinib, it would have been interesting to observe the manner in which the Patent Office would have dealt with such a challenge.
17 thoughts on “SpicyIP Tidbit: Did Sugen have proper title to its Sunitinib patent?”
If a proof of right (IP assignment agreement or an employment agreement with IP assignment clause) has been filed along with the application or within the permissible time limit, inventor’s signature on form-1 is not required.
I find that practice a little strange. I was just going through the correspondence on this file and it appears that Sugen has filed a ‘notarized copy of the Assignment filed at the USPTO’ at a much later date to establish the proof of right.
But surely, the inventors should be made to know that they are acquiring an Indian patent. How does filing a USPTO assignment serve the purpose?
Moreover, how difficult is it to get inventors to just sign a form especially since the patent right at stake is worth a few million dollars at the least.
I am not sure if you ever practiced before any patent offices. Without any offense, please spend a week at a Patent office or with any patent agent/attorney to understand the patent practice. Hope this will not be taken personally.
Please note that a proof of right needs to be filed by the applicant. Either inventors can sign form-1 of as mentioned previously those documents can be filed. It is not easy to get inventor’s signature on form -1 especially in current situation where the inventors are never at one Company for long. Moreover, once they have signed an IP assignment agreement or employment agreement with IP clause they always know that whatever they are inventing is going to go to Employer anyway, whether its a milling dollar invention or not.
As per practice if certain documents (here proof of right) not filed at the time of filing patent application or even after that, the examiner will ask the applicant to file the same alongwith a petition and pay the penalty. If an assignment deed was filed before the grant there do not seem to be an issue.
Hope the above will be taken in a positive way !
I get your point. But in the present case, why did the patent agent file a blank Form 1 – what purpose does it serve?
Hi Prashant, agreeing to what Anon said, The usual practice is to file a blank Form 1 to meet deadline dates and then follow it up with a signed form 1 or assignment at a much later one.
Thanks for your comment. But please tell me – what is the entire point of filing a blank Form 1? I don’t understand it.
Rule 10 does give the applicant three months time to file the proof of assignment but this proof of assignment is distinct from fulfilling the requirements of Form 1, which includes signatures of the inventors.
Stop dragging this topic Prashant. This is an accepatable practice and nobody can get a patent without the proof of right being established. The US assignment as discussed above covers the whole world as worded and hence a notarized copy of the same is sufficient in lieu of the application form 1.
In any case, the Patent Office is very careful and diligent in ensuring the same. Deadline is anyways 6 months and not 3 months. But that does not mean that if we have not been able to file it within this time, we cannot file it later (but before grant). So, relax! As long as a document (even other than Form 1) properly satisfies the requirement, this is a non-issue, really.
Anon: If tou don’t want to read this discussion, please feel free to log off SpicyIP.
I’m not dropping this topic, it is quite obvious that there is something wrong over here either at the Patent Office or with Patent Agents like you. What is the point of filing a blank form 1? It doesn’t make any sense.
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Thank you for your comment and Happy Diwali to you.
The legality of the practice has to be determined according to the law and not according to how the patent office practice.
How can the patent office kick of a process without even confirming title. The examination process should not proceed until the patent applicant can file proof of title. It is not an onerous burden.
I’m yet to understand the purpose served by submitting an unsigend Form 1.
As for the Sugen patent, I guess you missed my next post on the topic, which makes it clear that Sugen did make a mistake with the Form 1: http://spicyipindia.blogspot.com/2012/11/spicyip-tidbit-probing-further-sugens.html
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Though i started the discussion but 7th comment was not by me. Just wanted to clarify that the law is very clear on this aspect and if you wish we could discuss this offline and clarify. Alternatively please refer the manual for more clarity.
Why file a non-signed form 1?
Form 1 contains a lot more information than just the assignment in Para 9(i). So if you are still wondering why file a form 1, then please read the complete section 7,54 & 135 and rule 20(1)
and then see the form 1 to understand why. How do you think the information about the applicant, inventors, priority and PCT information provided?
stop making a fool out of yourself by raising such questions.
How does USPTO assignment serve the purpose?
Surely you would not be asking this if you had seen a standard assignment filed at the USPTO before. Usually the assignment made and filed at the USPTO is a worldwide assignment for the priority application and all the other applications that evolve out of it. That would include the forthcoming Indian application also.
Plain reading of the relevant sections clearly indicates that if the applicaiton has been filed by the assignee in India, then proof of right is required. Form-1 is merely a decaration by the inventor stating that the applicant in India is/are the assignee and nothing more. There fore under strict interpretation, a separate deed of assignment is required in order to estabilish the rights of the applicant / assignee in India.
However, as per IPO practice and IPO manual some exception have been created but this interpretation not supported by any leagal backing. Therefore this issue can be settled only through a litgation.
@ Patently yours: If you are going to abuse me by calling me a fool atleast have the courage to do it under your own name instead of behaving like an anonymous coward.
But getting back to the topic at hand, I have to say that you are wrong, once again. The reason that a USPTO assignment does not serve the purpose is because any assignment deed transferring the right or title to a patent application will have to be registered in India for the purposes of paying stamp duty. If you have been advising your clients to evade stamp duty, well that is a whole new game.
As for an incomplete Form 1, I don’t understand how the form can be submitted when it is not signed. If the patent office wanted to treat all three components of Form 1 separately they would not have put all of them in one Form. The entire reason for having all of these components in Form 1 is because they are absolutely essential to proceed with the application. If you don’t have signatures on Form 1 don’t file the patent applications in question.
I wanted to know that whether the Court has the power to look into the validity of the terms and conditions of the assignment or license agreement once it has been registered by the controller under S. 68 and 69 of the Patents Act. It would be great if you can provide some case laws for the same.
Waiting for your reply. Thanks.