An Applicant who files a patent application is primarily the one that enjoys the benefits of the granted patent. An incorrect name or listing of names can lead to loss of substantial rights along with other issues. These errors may occur due to omission of names of individuals, who should have been named as inventors or by including names of individuals, who should not have been named as inventors in the patent application.
According to Section 6 of the Patents Act, 1970 (the Act) an application for patent can be made, either alone or jointly by:
a) a true and first inventor;
b) an assignee of the inventor;
c) a legal representative of the inventor or the assignee.
First let’s define an inventor, assignee and/or legal representative in a patent application:
Inventor: Though not defined under the Act, inventor, has been interpreted to generally mean a person who contributes any part of his ingenuity, skill or technical knowledge towards the invention.
Assignee: As defined under Section 2(ab) of the Act as including “an assignee of the assignee and the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person".
Legal representative: As defined under Section 2(k) of the Act "legal representative" means a person who in law represents the estate of a deceased person. Any of above mentioned errors can be set right by adding or deleting an inventor’s name to a patent application:
1) Procedure for adding an inventor to a patent application
Section 28 of the Patents Act, 1970 deals with addition of inventor(s) to a patent application, and the corresponding Rules are 66, 67, 68, and 69 of the Patent Rules, 2003. A request to add an inventor to the patent application can be made by any of the below listed entities, based on the circumstances.
a. Request by the applicant for the patent:
The applicant for the patent can make a request to the Controller to add a person as one of the inventors, if such person is also the applicant or is at least one of the applicants. As a best practice, it would be wise to submit to the Controller, consent of all the applicants, in case of joint applicants.
b. Request by applicant for the patent and the person who has to be added as the inventor:
The applicant and the person who has to be added as one of the inventors can make a request to the Controller, if the person who has to be added as the inventor is neither the applicant nor one of the joint applicants.
c. Request by the person who wishes to be added as the inventor:
The person who wishes to be added as the inventor can make a request by himself. Such a scenario might occur when the person is not an applicant for the patent on record, and the applicant on record is not willing to make a request to the Controller. On receiving a request of this nature, the Controller will give notice of the claim and the statement made by the person to every applicant for the patent and to any other person whom the Controller may consider to be interested. The Controller may, if required, provide an opportunity to be heard to any person to whom he had sent the notice, before deciding.
2) Procedure for deleting an inventor from a patent or patent application
Section 28(7) of the Patents Act, 1970 and Rule 68 of the Patent Rules, 2003 deal with deletion of inventor(s) from a patent application. Under Section 28(7), only those who were added as inventors as a consequence of the request(s) discussed earlier, can be removed. Such a request may be made by any person, and at any time. On receiving a request to certify that such a person should not have been named as the inventor, the Controller may, if required, provide him/ her an opportunity of being heard, before taking the decision.
The Act does not have dedicated provisions for removing inventors who were named while filing the patent application. However, relying on sections relevant to inventorship, a petition requesting the Controller to remove an inventor who was named at the time of filing the patent application can be filed.
Apart from addition or deletion of inventors, it is also possible to correct the names of inventors who are already on record. Such corrections may be required because of clerical errors while filing the patent application, or by reason of change in a person’s name. Request to make such corrections should be made using Form 13 with the prescribed fee.
