In a recent decision dated 19 December 2023[1], the Single Judge of the Madras High Court addressed an important issue in relation to the date of assignment and the date of declaration of the assignment, in the context of proof of right under the Patents Act, 1970 (‘Act’).
Facts:
The Patent Application/Appellant (NEC Corporation) filed a patent application numbered 7830/CHENP/2014 on October 24, 2014, before the Indian Patent Office. This application, a national phase application corresponding to the PCT application no. PCT/JP2013/058886, indicated three inventors (Iskren Ianev, Yannick Lair and Kouhei Gotou) who assigned the invention to the Appellant. All three inventors signed the Form 1 declaring that they assign the invention to the Appellant. However, one of the inventors, namely, Yannick Laira signed the Form 1 with the date indicated February 7, 2015. This date being after the date of application, i.e, 24 October 2014, the Controller refused grant of the patent application for being in violation of Section 7(2) of the Act, for not being an appropriate proof of right.
Arguments on behalf of the Appellant:
The Appellant contended that Rule 10 of the Patent Rules, 2003, allowed a six-month window for the submission of proof of right. It was asserted that the declaration dated February 7, 2015, complied with this statutory requirement. Additionally, the Appellant argued that the Controller misconstrued the date of signing of the declaration as the date of assignment, thereby incorrect leading to the refusal order.
The Appellant placed reliance on a declaration issued by the Appellant on 14 October 2022 stating that the inventors were employed by the company and that the invention was a work product in the course of employment. The Appellant also relied upon the assignment and inventors' declaration dated 15 March 2013 made by the three inventors in relation to the corresponding application before the US Patent Office. In the said declaration, each inventor, including Yannick Lair, recorded that the invention has been assigned and that the assignee is entitled to claim rights in respect of the application filed before the US Patents office and any corresponding foreign patent office.
Court's analysis and decision:
The Court analysed Section 6 and 7 of the Act, which inter alia state that if an application is made by an assignee, then the assignee needs to furnish the proof of right to file the patent application before the Patent office within the prescribed period. The prescribed period is 6 months from the date of filing the application, as per Rule 10 of the Patent Rules, 2003.
The Court observed that the Appellant provided the declarations of the inventors by way of the Form 1, within the prescribed period of 6 months.
On the aspect of the date indicated by one of the inventors in the Form 1, namely, Yannick Lair; the Court concluded that the assignment of the invention pre-dated the declaration by way of Form 1 by Yannick Lair. The Court held that there exists a distinction between the date of assignment and the date of declaration relating thereto and that the refusal order was a result of conflating the two.
The Court accordingly set aside the order of refusal pertaining to Patent Application No.7830/CHENP/2014 and remanded the matter to the Controller for adjudication on merits and in accordance with law, after providing a reasonable opportunity to the Appellant, within a period of four months from the date of receipt of the Court’s order.
[1] NCE Corporation v. Asst. Controller of Patents and Designs - CMA(PT)/29/2023