Proof Of Right In Regard To Patent Application

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It is not necessary that an applicant and inventor of a patent is the same person, in most of the cases they are different. The question is in such a case will it not be problematic to attain a patent? The answer is absolute ‘NO’. The provision for this problem lies in section 7(2) of the Indian Patents Act, 1970, which says as follows:

“Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.”[1]

It says that an applicant at the time of applying or within a prescribed period after filing the application for patent for an invention must submit ‘Proof of Right’ to make the application.

Proof of Right is a declaration given by the inventor saying that, he is the first inventor of the invention also that he is assigning his right of applying for the patent to the applicant of the patent. It can be submitted in FORM-1, point 12 of the form is the part that talks about the declarations given by the inventor [2]. It gives two kinds of declarations, one is when the right is obtained through assignment and another when an application is made in India through convention. In both the cases Proof of Right comes into existence when the inventor and the applicant are two different persons, but nothing stops a person from filing Form 1 even he himself is the inventor as well as the applicant, it only adds to the safety. Proof of Right can also be submitted through an assignment deed with all the conditions, right, duties etc by the applicant in the prescribed time limit.

Now the question is what is the prescribed time limit for submitting the Proof of Right by the applicant? As the above section says it can be submitted along with the application for patent or within such period as prescribed after filing the application. The prescribed time limit is given under Rule 10 of The Patents Rules, 2003. It says as follows:

“10. Period within which proof of the right under section 7(2) to make the application shall be furnished. —

Where, in an application for a patent made by virtue of an assignment of the right to apply for the patent for the invention, if the proof of the right to make the application is not furnished with the application, the applicant shall within a period of six months after the filing of such application furnish such proof.

Explanation —For the purposes of this rule, the six months’ period in case of an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India.”[3]

Therefore, according to Rule 10 Proof of Right must be submitted within 6 months after filing the application for patent. In case of an international application where India is a designated country the filing date for patent application is the date on which the application is filed in India.

Author:  M. Sai Krupa, intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

References:

[1]http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_113_1_The_Patents_Act_1970_-_Updated_till_23_June_2017.pdf

[2]http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_12_1/form-1.pdf

[3]http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf

[4] The Indian Patents Act, 1970

[5] The Patents Rules, 2003