By Archana Shanker

The issue of notice of entitlement/ proof of right to file an application for patent has extensively been dealt with by the Hon’ble IPAB in their order dated 17^th October 2020 in OA/63/2020/PT/DEL.  This decision comes at the right time and resolves many inconsistencies and streamlines procedure governed by the Act and Rules, particularly for national phase applications.

Under Section 7 of the Indian Patents Act read with Rule 10 of the Indian Patent Rules, 2003 an Applicant has to submit Proof of Right for filing of the application (notice of entitlement from the inventors).  This can be in several forms:

1. Filing of executed Form 1 by the inventors;
2. Filing of worldwide assignment/ confirmatory assignment / employment contract etc; or 
3. Filing of PCT 4.17(ii) declaration signed by the inventors.

In the case before the IPAB, the Patent Office rejected the patent application on a procedural issue of proof of right, despite the applicant having filed the WIPO cover page with PCT 4.17(ii) declaration in lieu of signed form 1 or assignment.

Section 7 (2) specifies the need for filing ‘proof of right’ in case the application is made by virtue of any assignment and states as follows:

Section 7

Form of application

“….(2) 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…..”

The said proof of right under Rule 10 has to be filed within a period of six months after the filing of such application furnish such proof.

For national phase applications, it is pertinent to mention Rule 20 and Rule 23(1) of the Patent Rules, in particular Rule 23(1), which reads as follows;

“23. The requirements under this Chapter to be supplemental of the regulations, etc., under the Treaty.—

(1)The provisions of this Chapter shall be supplemental to the PCT and the regulation and the administrative instructions made thereunder.”

Reference was also made to Chapter 5 of the PCT regulations in particular 51 bis.1 and 51 bis.2. 

CHAPTER 5: SPECIAL REQUIREMENTS TO BE COMPLIED WITH IN CONNECTION WITH THE NATIONAL PHASE

The IPAB thus came to the conclusion that the legal requirement of filing of proof of right is met by filing declaration under Rule 4.17(ii) in respect of national phase applications.