IPAB interrupts Patent Prosecution for Lack of Proof of Right

The applicants in this case challenged the rejection of their patent application. One of the objections was “proof of the right should be filed”. The applicant however failed to produce any proof of right. S 7(2) of the Patents Act, 1970 requires for production of such proof, which was the core issue in this matter. In view of non-production of such proof, the IPAB dismissed the applicant’s challenge. Further, the IPAB directed the applicants to file an amended application with the required documents for reconsideration by the Controller.

D J Solomon of De Penning and De Penning was the agent for the applicants.

Justice K N Basha(Chairman) and DPS Parmar (Technical Member) decided the matter. Read the order here. 

NTT DoCoMo Inc v The Controller of Patents and Designs [OA/39/2011/PT/CH ]

The appellant (applicant) had applied for a patent in India. The applicant was a Japanese company with a priority application from the Japanese Patent Office (the Convention country). Where an application for grant of patent in respect of an invention in a Convention Country has been filed, then similar application can also be filed in India for grant of patent by such applicant or the legal representative or assignee of such person within twelve months from the date on which the basic application was made in the Convention Country . Without further ado, I’ll get to the crux of this matter.

Proof of right is essential to establish a title, without which patent prosecution cannot proceed. S 7(2) states that where the “right to apply” for an invention is assigned, the proof of right is required to be submitted by the applicant.  As Prashant explained in a post,     “S 7 basically means that the applicant has to prove that the inventor has assigned him the right to file a patent application for his invention. Ideally the ‘best’ proof of title that one can file is the assignment deed between the inventor and the patent applicant.” S. 6 of the Patents Act lists the persons entitled to apply for patents, subject to S 134, and clause (b) allows any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application.

S 135 provides for filing of convention applications, and the applicants claimed to have applied for a patent through this route. This route, they argued precluded them from the application of S. 6 and 7, because these only applied to ordinary applications.  It was further contended that as far as Section 7(2) is concerned, the authority is to consider only the right of the applicant to apply and not in respect of proof of such right. It was also submitted that as per section 135, there is no requirement of any production of proof of right to file a convention application.

The Patent Office argued that apart from the lack of proof, there were a number of defects in the application. The applicant deleted the relevant column meant for convention application in the application and did not obtained the signature of the inventors (nor alternatively provide the assignment deed). These are basic stipulations for filling out Form-1 while applying for a patent, especially when the applicants had stated that they were the assignees to the patent.

The IPAB at the outset noted that the application not only suffered from serious defects, the applicants had taken no steps to rectify them nor filed the proof of right.

Dismissing the applicant’s contention with respect to S 6, the IPAB held that it applied to ordinary and convention application as well. The IPAB also dismissed the contention with respect to S 135, stating that there was nothing to suggest that S 135 concerns with filing of proof of right, and therefore the applicants can’t take shelter under this provision.

It explained S 7(2), “the said provision made it crystal clear that if the application is made by virtue of an assignment of the right to apply for the patent for the invention, the appellant shall produce or furnish within such period as may be prescribed from the date of filing application the proof of the right to make the application.”

Further, S 139 of the Act expressly states that all the provisions of the Act shall apply in relation to a convention application and the patent granted in pursuance thereof.

In view of these findings, the IPAB upheld the Patent Office’s decision to reject the patent. However, it opined that the Controller instead of refusing to entertain the application ought to have given opportunity to the applicant for submitting an amended application as provided by S 15 of the Act. Therefore, it set aside the Controller’s order and remanded the matter for reconsideration upon the applicant filing an amended application with the required documents.

This Order is believed to have caused flutter in the patent agents fraternity which is not in the least due to the duplication of paperwork involved in establishing the title. It is also due to the Indian Patent Office now putting its foot down and asking for proof of right, 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.