Patent

First to File or First to Invent- Which system does India really follow?


The first to file (FTF) and the first to invent (FTI) systems define who shall have the right to grant of patent. Under the FTF system, the person who files for the patent for a given invention first is eligible for the grant of patent for that invention, regardless of the date of actual invention. Under the FTI system, if more than one applicant files patent applications claiming the same subject matter, the patent office institutes proceedings in order to determine who the first to invent was.

Most nations subscribe to the FTF system, where patent is granted simply on the basis of priority date. The US was previously one of the only countries to follow the FTI system. But in 2013, it switched over to what is known as the “first inventor to file” (FITF) system, which is essentially an FTF system, but with the exception that disclosure of the same invention (or part thereof) within the previous year shall be considered as prior art unless it emanates from the applicant itself. This has also been dubbed as a “first to disclose” system.

Here, I attempt to ascertain whether India follows the FTF system or the FTI system. As I soon find out, things are not quite as simple as they seem.

Section 6 of the Patents Act 1970 states:

“6. Persons entitled to apply for patents

(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—

(a) by any person claiming to be the true and first inventor of the invention;

(b) by 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;

(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.”

Section 6(1)(a) states that a person must be the “true and first inventor” of the invention. This would mean that first, the person applying for the patent must be the genuine inventor (or inventors) of the invention. Secondly, the true inventor must also be the first inventor (or inventors) of the invention, i.e. he must be the first to invent. This provision prima facie implies that India follows a FTI system.

However, as per the prevailing perceptions amongst scholars and professionals in the field, India follows the FTF system. How is this possible? Does this mean that the claims of the first to file are irrefutable simply on the basis of priority date?

Some believe that the Indian Patent Act provides a remedy to prove this “true inventorship”. As per section 25(1)(a) and section 25(2)(a) of the Act, a person may oppose the grant of a patent, on the ground “that the applicant for the patent (or the patentee) or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims”. Further, section 64(1)(b) lays down that the patent may be revoked on the ground that was granted on the application of a person not entitled under the provisions of this Act to apply therefor., This provision, read with section 6 of the Act may be interpreted in a manner which enables the revocation of the patent in favour of the “true and first inventor”.

However, by tracing the history of this provision, we reach a very different conclusion. The Statute of Monopolies, 1623 was the first statutory expression of the UK Patent Law. Under section 6 of this Act, the phrase “true and first inventor” is used. This definition carried on to the Patents Act 1883, which stated that, any patent granted to someone other than the “true and first inventor” under section 6 of the Statute of Monopolies, shall be void. Despite this provision, the UK followed an FTF system.

This is because the term “true and first inventor” is meaningless without disclosure, as without disclosure, there is no benefit to society at large and it is as if the invention never happened in the first place. Hence, the mere possession of an idea is meritless. This first to disclose rule became the present day first to file rule. Frost, in his Treatise on the Law and Practice relating to Letters Patent for Inventions, 2nd ed., 1898 stated:

“The person who himself actually makes an invention and is the first to disclose that invention will be the true and first inventor in the legal sense of the term and a valid patent may be granted to him notwithstanding the fact that it may possibly be shown that the invention had previously been made by another who did not disclose it.”aten

The rationale for this statement is that the person who brings his invention to the Crown first, and discloses it to the public, shall have the right to enjoy the benefits of the invention.

Hence, the “true and first inventor” is not the first to invent, but the first to file, as it is by filing that the invention is disclosed to the public. Thus, legally speaking, the first to file is the first to invent. By interpreting the Indian Act in light of the Statute of Monopolies and the prevailing law in England at the time, it becomes clear that India follows an FTF system.

We may still harmonize the provisions of the Act in their ordinary meaning with the legislative history of the Act. Under section 25 of the Act, only that situation is protected where the work is wrongfully obtained from the person opposing the grant of patent. In this aspect, there is a safeguard provided to the “true and first inventor”. However, in case of a parallel invention, where two inventors are working in isolation to each other, the first to file shall be considered to be the “true and first inventor” as the other kept the invention to his chest, even if he actually came up with the invention first. As Terrell states in “The Law and Practice relating to Letters Patent for Inventions” 4th ed. 1906:

“In the case where two persons make the invention independently and both apply for and obtain patents, the priority to be considered is that of the applications, not of the inventions.”

However, in the absence of case law, one cannot be sure of the interpretation the Indian courts shall adopt or how this situation will play out practically.

Image taken from here.

Vasundhara Majithia

Vasundhara Majithia is a fifth year student at National Law University, Jodhpur and a Senior Content Editor at the Journal of Intellectual Property Studies (JIPS). Intellectual property was introduced to her in her third year and she hasn’t quite gotten over it since. Her interests include an eclectic mix of Intellectual Property, Trade laws, Constitutional law, and commercial laws. When not frantically blogging, she can be found nose deep in fiction, researching serial killers, or cooking to escape hostel food.

6 comments.

  1. AC

    If it is of any use:

    [Please see, P.Narayanan’s “Patent Law” , 4th Ed. p.41]

    1. “If two persons have made the same invention and neither has used or disclosed it to the world, the one who applies first for the patent will be considered in law the true and first inventor although the other might have made it earlier in point of time”
    [See Canadian General Electric v Fada Radio AIR 1930 PC 1 at 5, followed in Bombay Agarwal v Ramchand AIR 1953 Nag 154 at 162, 163.
    2. “There are many instances in various branches of science of indepependent investigators making the same discovery. That does not prevent the one who first applies and gets a patent from having a good patent…”
    Pope appliance corpn. v spanish river pulp, AIR 1929 PC.

    Reply
    1. Vasundhara Majithia

      Thank you for your comment.
      It is indeed helpful to read case laws relating to this issue. However, unfortunately, I could not locate the case of Bombay Agarwal v Ramchand. Would you have a copy you’d be willing to provide?

      Reply
      1. Krishnaraj

        Hi,

        http://www.lawfinderlive.com/jlink.aspx?q=7%5D2016&p=14&pos=109&qType=7&tidp=296860&tid=319579

        The above link seems to have the text of the case law (judgement). Point 45, where they cite the English case law, inclines toward favoring the first-to-file inventor. I’m quite skeptical about the context in which the case law is used. In my opinion, they seem to be using the excerpt from the English case to define the term – invention and in the following passage they seem to work on the assumption that the patentee is the true inventor. It would be great if we have a precedence from one of the Indian courts. So far, I could not find anything particular.

        I’d be actually happy to know what statutory interpretation technique (if you have already thought through) that you’d employ to make an argument here, assuming you take any one of the sides (FTF or FTI).

        I’m not sure how I’d address this, should this question come in my line of work. Power to your for bringing this question up – thank you.

        Best regards,
        Krishna

        Reply
  2. Abdul Gania

    @AC Thanks for the case laws, I am not sure what SpicyIP intends to prove here. The situation seems pretty clear to me, SpicyIP is creating unnecessary confusion without proper research.

    Reply
  3. none

    what the situation in India would be if two independent isolated inventors files on the same day for the same invention? who will get the priority? Does the time on which an application is filed is relevant? How about two independent applicants filing on the same day at same time at two different patent offices?

    Reply

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