Madras High Court provides clarity on Proof of Right, says date of assignment and date of declaration are different.

In a recent case, the Madras High Court set aside an order of the Assistant Controller of Patents and Designs, refusing a patent application on grounds of violation of Section 7(2) of the Patents Act, 1970. NEC Corporation filed a national phase application before the Indian Patent Office on 24.10.2014, claiming priority from the PCT International Application No. PCT/JP2013/058886. The said national phase application was refused by the Controller on 31.03.2023 on the ground that one of the inventors named in the application had signed the Form 1 after the filing date of the application in India.

The controller in his refusal order had stated that “If assignment containing signature, dates later than filing date of the patent application filed in India then the application becomes invalid itself since applicant has no right to file application upto the filing date.” The Court examined this reasoning and opined that there is a distinction between the date of assignment and the date of declaration. The declaration filed by the Appellant on 14.10.2022 asserted that the inventors were employed by the company and that the invention was a work product in the course of employment. The assignment and inventors’ declaration made by the three inventors in relation to the corresponding application before the US Patent Office clearly indicated that rights had been assigned and that the assignee was entitled to claim rights in respect of the application filed before the US Patent Office and any corresponding foreign patent office.

This decision is likely to provide much-needed clarity to Applicants and Controllers alike who often encounter the same or similar objections relating to proof of right under Section 7(2) and Rule 10 of the Patents Act.

Citation: NCE Corporation v. Assistant Controller of Patents and Designs, Madras High Court, 19th December, 2023, CMA(PT)/29/2023



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