INDIA: IPAB holds PCT declaration under Rule 4.17 (ii) acceptable as a Proof of right Requirement

The Hon'ble Intellectual Property Appellate Board (IPAB) in a recent order [OA/63/2020/PT/DE DOW AGROSCIENCES LLC v. THE CONTROLLER OF PATENTS] has delved on the aspect of Proof of Right requirements in Indian National Phase Applications and held that the inventor declaration filed under Rule 4.17 (ii) of the PCT Regulations during the international phase is sufficient to establish Proof of right in Indian National Phase applications.

This is a landmark ruling since the IPAB has clarified that a patent applicant entering India through the national phase route, cannot be placed under an unreasonable burden of filing a separate proof of right document, if the Applicant has submitted a PCT Rule 4.17 (ii) declaration.

As per the facts of the case, the Appellant complied with the proof of right requirement as mandated by Section 7 (2) of the Indian Patents Act by furnishing the PCT Declaration under Rule 4.17(ii) supporting the Applicant's ‘entitlement to apply for or be granted a patent’. The Indian Patent office however objected to the same at the office action stage and hearing stage and later refused the Application owing to non establishment of Proof of right in the impugned application 8373/DELNP/2014.

An appeal was preferred on the ground that the adjudicating authority did not provide cogent reasons for refusing to consider the PCT Declaration 4.17(ii) as a valid proof of right of the Applicant.

After considering the relevant provisions, the IPAB has held that the Patent Office has erred in not taking a comprehensive view of the legally accepted norms by which the requirements of filing ‘proof of right’ could be satisfied. The IPAB has upheld the admissibility of PCT declaration under Rule 4.17 (ii) as an alternative to submission of executed assignment/application Form 1. The only caveat to this ruling is that the Patent Office can require the Applicant to produce further documents or evidence to substantiate its entitlement, in accordance with Rule 51bis.2 of the PCT Regulations, if the Patent Office has any doubt on the veracity of the declaration.

In the present case, there was nothing on record to show that the Patent Office had any doubts as to the veracity of the declaration. In the facts and circumstances of the case, it was held that the Appellant had met the legal requirement of filing ‘proof of right’ by filing the declaration under Rule 4.17 (ii) of the PCT Regulations.

The decision of the IPAB is a welcome development since this is the first judicial pronouncement on the issue that ‘proof of right’ can be met by filing PCT declaration under Rule 4.17 (ii). Hopefully, this precedent will bring about uniformity in the practice of the Patent Office with regard to the acceptability of PCT declaration under Rule 4.17 (ii) as a valid alternative to the other prescribed proof of right documents.

OUR RECOMMENDATION:

Keeping in mind the divergence in practices followed by the various officials of the Patent Office, we suggest the following:

- It would be advisable to wait and review if the Patent Office challenges this decision in Court or issues updated guidelines allowing PCT declaration under Rule 4.17 (ii) as an option to meet the requirement of proof of right to file patent application. However, as currently all deadlines are suspended due to the Supreme Court order in view of the pandemic, the wait for clarity in this matter may run into an extended period.

- In the meanwhile, the established practice of filing of Certified copy of assignment and Form 1 as Proof of right documents should continue to be followed to prevent unnecessary formal objections being raised since there is currently no uniformity in practice requirements in this regard. With more than 1000 examiners spread across four branches, our experience says that it will take some time for the practices of the Patent Office to be streamlined to give effect to the ruling even if it is not appealed.

- At present, Inventor declaration under Rule 4.17 (ii) of the PCT Regulations should be filed only in situations where there is no recourse available to the Applicant due to unavailability of the inventor or lack of an existing assignment deed. We shall review further developments in the matter and provide a further update immediately when the Patent Office starts accepting such declarations or issues any notification to such effect.

- If the Patent office has any objection related to the veracity declaration under Rule 4.17 (ii) of the PCT Regulations, appropriate time is given to the Applicant to submit original documents. Depending on the circumstances of the matter, the objection can either be rebutted in view of the above case law or can be handled by filing any other appropriate document available at that stage.

To conclude, we will constantly monitor the developments on ground level and will provide you with our revised recommendations in case the Patent Office gives effect to the IPAB decision in practice or by issuing any notification or updates its guidelines practice manual.

Please feel free to direct your queries to the author Ms. Shivarpita Nailwal, Partner shivarpita@iprattorneys.com