Applicability of the principle “Proof of the right” to Conventional application

This article relates to a recent judgment of IPAB in the case “NTT DoCoMo Inc. Vs The Controller of Patents and Designs” for a patent application No. 794/CHE/2006 which was refused to proceed further by the Indian patent office.

A brief summary of the case

In summary, the application relates toTRANSMISSION RATE CONTROL METHOD AND MOBILE STATION filed by NTT DoCoMo Inc., a Japanese company on 2nd May 2006, bearing patent application number 794/CHE/2006. The application was filed as a conventional application with priority from Japanese application No. 3.2005-134640 dated 2nd May 2005 filed at the Japanese Patent Office. However,c during the examination of the patent application by IPO, the examiner raised an objection regarding “proof of the right should be filed” inter alia. The appellant however failed to submit proof of the right in due time and the application got rejected by the Indian patent office. The appellant being aggrieved by the rejection challenged the order given by the patent office in the Intellectual Property Appellate Board (IPAB). Hence this appeal was filed.

The argument advanced by the appellant

The counsel for the appellant mainly relied on their contentions based on the provisions of Section 6 (Persons entitled to apply for patents), Section 7 (Form of application), and Section 135 (Convention applications) of Indian Patent Act, 1970. The counsel contended that section 6 is applicable only in respect of the ordinary application and not in conventional application. It is further contended that so far as Section 7(2) is concerned, the authority is to consider only the right of the appellant to apply and not in respect of proof of such right. Appellant also stated that as per section 135, there is no requirement of any production of proof of right for a conventional application which excludes from the application of sections 6 and 7 (2).

Arguments advanced by the respondent

The Respondent argued that in addition to the lack of proof of the right, there were a number of flaws in the application. The appellant deleted the relevant column meant for conventional application in the application and also neither obtained the signature of the inventors in column 9(i) of Form-1 nor alternatively provided the assignment deed signed by the inventors assigning the invention to the appellant. Thus the appellant failed to comply with these basic stipulations for filling out Form-1 while applying for a patent, especially when the appellants had stated that they were the assignees to the patent.

Judgment

Considering the provisions of the Indian Patent Act, 1970, IPAB made it clear that section 6 deals in respect of the person entitled or competent to apply for patents. IPAB further stated that said provision cannot be confined to the ordinary application but it is also applicable to the conventional application. In view of section 7(2), the IPAB further stated that if the application is made by virtue of an assignment of the right to apply for the patent for the invention, the appellant shall produce or furnish within such period as may be prescribed from the date of filing the application the proof of the right to make the application. In view of section 135, IPAB held that there is no such provision discussed in said section that proof of the right shouldn’t be filed for conventional application. Further to bring out clarity, IPAB also referred section 139 which states all the provisions of the Act shall apply in relation to a conventional application and the patent granted in pursuance thereof and the person apply in relation to an ordinary application.

Thus in the light of the above averments, IPAB upheld the Patent Office’s decision to reject the impugned patent application. Further, it also opined that the Controller ought to have given the opportunity to the appellant for submitting an amended application as provided by Section 15 of the Patent Act instead of refusing to entertain the application. Therefore, IPAB set aside the Controller’s impugned order and remanded the matter for reconsideration giving an opportunity to the appellant to submit an amended application with the required documents.

Conclusion

Thus it can be concluded that the decision given by IPAB is a well-balanced judgment where the IPAB rejected the appellant’s contention regarding the non-applicability of “proof of the right” to conventional application. But at the same time, IPAB referred to section 15 and opined that an opportunity in the interest of justice shall be provided to the appellant for filing an amended application with the required documents. Thus IPAB remanded the application to the Indian patent office.

About the Author: Mr. Sitanshu Singh, Patent Associate at Khurana and Khurana and can be reached at Sitanshu@khuranaandkhurana.com

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