IPAB rules on controller's decision regarding proof of right requirement

In its recent order in NTT DoCoMo Inc v Controller of Patents and Designs (Order 252/2013) the Intellectual Property Appellate Board (IPAB) dealt with the contentious proof of right requirement under Section 7(2) of the Patents Act 1970. In an earlier order the controller had refused to grant Application 794/CHE/2006, filed by NTT DoCoMo Inc.

According to Section 6 of the act, an application for a patent can be made, either alone or jointly, by the true inventor or by an assignee or legal representative thereof. Section 7(2) of the act requires that where an application is made by virtue of an assignment, such application must be accompanied by proof of the right to make such an application within the prescribed period. The timeframe prescribed under the act is six months from the date of filing of the application. During the first examination report, the examiner had objected that since the applicant was the assignee of the inventor, it has to fulfil the Section 7(2) requirement and submit the proof of right to file such an application.

Controller’s order
The applicant argued that since the application was filed under Section 135 of the act, which pertains to Paris Convention applications, proof of right was not required. It argued that since the application was not made by virtue of an assignment of the right to apply for a patent, Section 7(2) was not applicable. It also contended that Section 6 of the act applies to ordinary applications, not convention applications.

The applicant relied on the controller general's Internal Instruction 6/2009, which states that where the applicant for the Indian application and the corresponding convention application is the same, the applicant must file only the declaration of inventorship under Section 10(6) of the act, read with Rule 13(6) of the Patent Rules 2003, along with a declaration that the applicant in the convention country is the assignee of the true inventor; no proof of right is required. The instruction also states that this also applies in the case of national phase applications under the Patent Cooperation Treaty.

The controller stated that Section 135 of the act relates only to the priority date of the convention application, and not to proof of right, and does not absolve the applicant of the obligation to provide proof of right to make the application from the inventor, since the inventor is the sole owner of the invention.

The controller observed that although the applicant had declared that it was the assignee of the true inventor in Forms 1 and 5,  Form 1 had been improperly filed. The applicant had deleted Column 9(i) of Form 1, under which the applicant was to obtain the signature of the inventor declaring that the applicant was its assignee or legal representative. The controller refused to grant the patent as the applicant neither provided any document proving the assignment of right by the inventor nor submitted the correct Form 1, even after the hearing.

According to the controller, the requirement under Section 7(2) would be met by either obtaining signatures from the inventors in Column 9(i) of Form 1 or submitting an assignment deed from the inventors.

IPAB order
On appeal, the IPAB concurred with the controller that Section 6 of the act also applies to convention applications and nothing in Section 135 of the act would suggest that the applicant was not required to file proof of right under Section 7(2) of the act.

The IPAB also held that under Section 139 of the act, the act applies in relation to both convention applications and ordinary applications. While agreeing with the controller’s decision on all counts, the IPAB held that the order had been issued based mainly on procedural defects, which could have been resolved under Section 15 of the act by allowing the applicant to amend its application. Thus, the IPAB clarified that in case of procedural defects in an application, the controller should not refuse the application without allowing the applicant an opportunity to amend it by providing the relevant documents.

Thus, the IPAB set aside the controller's order and remanded the matter to the controller, giving the applicant the opportunity to submit an amended application under Section 15 of the act, including the required documents to establish proof of the right to apply. The IPAB stated that if the applicant fails to submit such application, the controller's order will be restored automatically.

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