You have this amazing idea that can change the world or can make you earn a billion dollars. The idea is so amazing that you are scared to implement it. You have various reservations, what if somebody would steal your idea or make a similar or better product? You are afraid to put your idea into the market without some sort of protection. Well, patent can protect you from all the scavengers of the industry. A patent is a techno-legal document that grants protection to your idea in the industry by the government in exchange for full disclosure of the invention.
But, what if, you are working for a company and they take all the credit for your hard work? They make you sign bonds to give up all the rights you have over the invention. Worse, you do not even know what rights you are giving up when signing the said bond? Will the patent still protect you? Do not worry! We have the answer to your every query.
What are the rights of an Inventor? – Inventorship
An Inventor is a person who plays a crucial role in the development or has immensely contributed to the application of the invention. The individual must have contributed by his/her ingenuity and creativity. Every person who has made such a contribution is mentioned in the document as an inventor. It should be noted that the company is not considered an inventor even though it might be entitled to commercial rights.
What are the rights of an Applicant?
The applicants can be the inventor himself, or assignee, or his legal representation.
The assignee of the inventor is the person with whom the inventor has entered into a contract and transferred all the rights to deal with the patent to that person. The assignee is the company or organization that exploits the invention and possesses commercial rights. Often, the employee transfers the patent rights of his/her work to the organization. So, the organization files the patent application. For example, if Microsoft comes up with a new invention; the people who contribute to the invention are inventors but since they have transferred their patent rights to Microsoft, Microsoft shall file for the patent.
When does an assignee submit “Proof of right”?
When an assignee submits an application for a patent, the assignee further needs to submit a ‘proof of right’, as per Section 7(2) of the Patents Act, 1970 read with Rule 10 of Patent Rules.
Section 7(2) states “where the application is made by the 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 proof of right is a declaration by the inventor through which the assignee is appointed to file for a patent. It establishes the bonafide intent of the assignee and hence, serves as proof for the Controller to decide the right of the assignee while filing the application.
Documents required
The submission of documents is important as it protects the rights of the inventors. It certifies that no application is made in violation of the inventor’s rights. The procedure of providing “proof of right” is very easy. The applicant has to submit Form 1 or assignment deed, in which the inventor/inventors declare that he/she/they have assigned the assignee to file the application. If there are multiple inventors across the world then the patent office also accepts the individual signed document. Further, in respect of convention applications, the assignee can also submit a certified copy of the patent assignment recorded with the patent office in the convention country as proof of right.
In respect of a PCT national phase application, no proof of right is required if there is no change in inventor(s) and/or assignee at national phase filing and in case the applicant has furnished a declaration under Rule 4.17 of PCT Regulations.
Time limitation
The proof of right is generally given with the application or within 6 months from the application according to Rule 10. An extension of one month may be granted, provided that such request is made within 6 months from the application.
Importance of submitting proof of right
Once the assignee submits proof of right then only the application of patent is processed. Proof of right protects the rights of the inventor from any misuse or misappropriation. When such an assertion is made, the inventor is assigning the rights of the patent to the applicant.
When the company is in control, such as if the inventors are employees or co-workers, receiving this proof of right is not challenging. However, difficulties arise if the inventors have left the organization, then obtaining the proof of right becomes a difficult task. Where inventors are ex-employees, filing of a certified copy of the employment contract may be sufficient. Only if, the contract states that any invention made by the employee during the tenure of his employment, the such invention will belong to the employer. Any evidence can support it. In the case of a deceased inventor, the legal heir of the inventor has to sign the form.
Often, it is also observed that the assignee submits proof of right without the signature of the inventors and yet receives the grant of patent. In NTT DoCoMo vs. Controller of Patents, Intellectual Property Appellate Board held that if the applicant had not submitted the proof of right to make the application for a Patent then it should be given a chance to amend the such application and on the failure of this, the application is rejected.
Proof of right when revoked
The Patents Act, 1970 aims to protect the rights of the first and true inventor. Hence, the inventor may file an application to revoke the patent stating that the patent was granted on an application of a person not entitled by the provision of this act under section 64(1).
When the proof of right is not submitted
If the proof of right is not submitted, then the Controller of Patents may refuse the application. He may also allow a third party to initiate proceedings to revoke the patent granted without proof of right.
To sum it all up, it needs to be understood that the Proof of Right is a mandatory requirement under the Indian Patents Act, when the assignee/company/employer submits the patent application to safeguard the rights of the inventor over the invention. For more details, please contact us.
