The inventor is the principal actor in the patent prosecution drama. Section 7 of the Indian Patents Act prescribes that where the application is made by virtue of an assignment of the right to apply for a patent for an invention, the applicant is required to furnish, either along with the application or within six months of the date of filing of the Indian application, a proof of right to make the application. This is a mandatory requirement under the Rules (Rule 10). A proof of right must be submitted either along with the application for patents, but if it is not so furnished, the applicant shall furnish such a proof of right within a period of six months after the filing of the application in India. The period for filing of the proof of right may be extended under the provisions of Rule 138, by a maximum period of one month, provided, however, that the application for extension is filed within the six months period allowable for filing.
Under the Indian patent filing system, there is a very simple method of establishing this proof of right. In the form of filing a patent application, i.e. Form 1, the inventor/s is/are required to sign a declaration in original by which it or they declare that the applicant is its/their assignee or legal representative. This original declaration given by the inventor/s is considered adequate to satisfy the proof of right requirements. If there are multiple inventors and these inventors are located in different parts of the world, the patent office also accepts individual signed documents from each of the inventors and the document does not need to travel throughout the world for including the inventors’ signature thereon.
Some practitioners insist that the actual assignment deeds or certified copies thereof be filed by which the applicant can show that the inventor has assigned the right to apply for the invention to the applicant. But in my opinion, such a practice is unnecessary, time consuming and increases costs.
When the inventors are in the control of the applicant, such as if the inventors are employees or co-workers, obtaining this proof of right is not a difficult task. However, difficulties arise when the inventors have left the organization of the applicant or have expired. In such cases, the applicant is concerned as to how it should provide such a proof of right. I will try to explain how this is not such an onerous task as believed.
In the case of inventors who are ex-employees, filing of the certified copy of the employment contract may usually be sufficient provided that the contract states in clear terms that any invention made by the employee during the period of the contract is the property of the employer. This employment contract can be supported by any other recordal of right such as under the PCT or in the application filed in the priority country. In the case of a deceased inventor, it would be acceptable if the form is signed by the legal heir of the inventor. In the event that the contract of employment is not clear as to the transfer of ownership of the invention, secondary evidence may be tendered within the prescribed period (6 months from the date of filing of the application) concerning the assignment of the right to apply for a patent. Often such an assignment of right is found in the assignment of the invention in the home country or application under the PCT.
Things can get a little bit more complicated where there is no clear statement of transfer of the invention in favor of the employer. In such cases also secondary evidence will be need to be provided. This includes evidence by way of an affidavit from the officer of the applicant and from co-inventors, if there are any, along with letters written to the inventor asking him to sign the document. All this evidence can be then lodged at the Patent Office in an attempt to establish that the applicant is the true owner of the invention. As a final resort, the applicant may even file an action in the Court against the inventor asking him/her to acknowledge that the applicant is the owner. The important thing to remember is that the filing of all these documents and evidence must be done within the prescribed period, which is six months from the date of filing of the application in India. In the event that it is not done, the Controller has the power under Section 15 to refuse the patent application on the grounds that applicant has not complied with the requirements of the Act (Under Section 7).
The important message that I want to communicate is that a document purporting to be a proof of right must be filed within the six months period. If there are no objections or clarifications or changes needed in that document this can be taken up at the time of the examination but the applicant should not miss this mandatory deadline because it is quite likely in the future that the Controller may refuse to proceed with an application whose deadline is missed.