Proof of Right Requirement For The PCT National Phase Patent Applications In India

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Intellectual Property Appellate Board (IPAB) in its order, OA/63/2020/PT/DEL dated 27 October 2020, observed that filing of the declaration under Rule 4.17 (ii) of the PCT Regulations during PCT filing satisfies the legal requirement of filing ‘proof of right’ for PCT National phase patent applications in India and set aside the order dated January 30, 2020 (Impugned order), Assistant Controller ofPatents & Designs, Patent Office, New Delhi in the Indian Patent application: 8373/DELNP/2014.

FACTS OF THE CASE

Proof of Right Requirement For PCT Application in IndiaThe Indian patent application No.:8373/DELNP/2014is a PCT national phase patent application. The applicant submitted that the proof of right requirement as mandated by Section 7(2) of the Patents Act, 1970 was duly complied with by furnishing of the PCT document - PCT Declarationunder Rule 4.17(ii) supporting the ‘Applicant’s entitlement to apply for or be granted a patent’, at the Indian Patent Office (IPO) at the time of national phase entry. However, the Controller refused the subject application on the sole ground of the non-filing of the ‘proof of right’ document.

CONTENTION OF THE PATENTEE/APPELLANT

Against the Controller decision, the Appellant contended that the legal requirement of proof of the right of the PCT national phase patent application can be metif the corresponding declaration is made at the PCT stage as envisaged by the PCT guidelines, Rule 51bis 2(ii).

Rule 51bis 2: Certain Circumstances in Which Documents or Evidence May Not Be Required

The designated Office shall not, unless it may reasonably doubt the veracity of the indications or declaration concerned, require any document or evidence:……

(ii)relating to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (Rule 51bis.1(a)(ii)), if a declaration as to that matter, in accordance with Rule 4.17(ii), is contained in the requestor is submitted directly to the designated Office…….”

IPAB’S ORDER

In order to assess the need for filing the document, establishing the proof of right, IPAB analyzed the various Sections 6, 134, and 7(2) of the Indian Patent Act, 1970 and Rules 10 and 20 of the Patent Rules, 2003. Further, IPAB had a look at the relevant provisions of the requirement of documentary evidence to establish the eligibility to file a PCT national phase patent application such as PCTRule 51bis.1, Rule 51bis.2 and PCT Applicants Guide –National Phase.

After analyzing the relevant provision of the Indian Patent Act, 1970 along with the summary of the requirements for entry into the national phase and PCT national phase rules, IPAB observed that the legal requirement of filing ‘proof of right’ is met by filing the declaration under Rule 4.17 (ii) of the PCT Regulations since the Controller does not raise at any point of time a reasonable doubt on the veracity of the indications or declaration concerned.

Further, IPAB observed that the IPAB order, NTT DoCoMo Inc. v Controller of Patents and Designs cited by the Controller to refuse the patent application, is not analogous to the instant case since the appellant never claimed that the requirement of filing ‘proof of right’ is not a mandatory condition under the Patents Law but they precisely argue that in case of availability of the declaration under Rule 4.17(ii) of the PCT; such requirements are considered to have been met.

Finally, the IPAB has set aside the impugned order of the Assistant Controller of Patents by allowing the appeal of the Appellant and directed the Assistant Controller of Patents to grant the patent in respect of the invention claimed in the instant application no. 8373/DELNP/2014 strictly within 2 weeks of the issuance of the order.

Conclusion:

The present IPAB order clarifies that the assignment of the inventors in form-1 is unwarranted in the case of a PCT national phase patent application in India if the corresponding declaration was made under PCT Rule 4.17(ii) at the PCT stage.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

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