“Unlike USA, which is a first-to-invent patent system, India is a first-to-file patent system.” – This is perhaps one of the very first lines taught to me in my basic patents class and I accepted this omnipresent claim as a matter of fact. It´s been quite some time that I have dared to re-look at this seemingly irrefutable fact and struggling to accept its veracity. The bone of argument lies in section 6 of the Patents Act, 1970, which is:
6. Persons entitled to apply for patents
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
(emphasis provided)
Now this section confers legal rights, to apply for a patent, in favour of a person who claims himself to be a ‘True AND First Inventor’ of the invention [as is also evident from the language of Form-5 (Declaration as to Inventorship) – a compulsory form to be submitted with the Application for patent]. Now we consider two hypothetical situations to understand this in some detail:
a) Situation 1 is where the Applicant or the Patentee ‘wrongfully obtained’ the invention from the actual viz. true and first inventor (who either did not apply for patent or applied only later) – such wrongful obtention is covered as a ground of Opposition in the pre-grant opposition [section 25(1)(a)] as well as in post-grant opposition [section 25(1)(a)] and also as a ground of revocation of patent [under section 64(1)(b)]. In such case the Applicant/Patentee is technically not the “True and First” inventor and thus the declaration made by the Applicant during the application is evidently false and thus irrespective of such explicit provisions of opposition/revocation, the Opponent may still have some remedy under common law. Section 26 and 52 further provides to the extent that if such ground is proved, the Controller may transfer the patent ‘as is’ (or with requisite amendments) in favour of the Opponent, and in case the Opponent has already preferred an application for the invention and the same is pending, the earlier priority dates of the wrongfully filed patent application shall be conferred upon the Opponent’s later filed genuine application, as if the Opponent filed its application on the earlier date. Thus whenever an application for a patent is filed, it is assumed that it is filed by the True and First Inventor (even if actually it is not done so by the True and First Inventor, whose identity is determined only later in time and in whose favour the original application/patent is transferred then).
b) In the Second situation, which is more difficult and involves prime issue of this post, is where an invention is conceived independently by two inventors – A and B (assuming all fair play and no wrongful obtention). For the purpose of details, A conceived the invention on June 1, 2009 and filed an application for patent on July 1, 2009, whereas B conceived the invention on March 1, 2009 (and presumably B is able to prove its claim of date beyond reasonable doubt through its records) and applied for the patent only on August 1, 2009. Now, A applied for patent on July 1, 2009, but technically he may be the True inventor but certainly not the First inventor (Note the requirement is of being True AND First Inventor) of the invention and thus is not entitled to make the application, which should be bad in law and may be void ab initio (unless later transferred in favour of real ‘True and First Inventor’ with retrospective effect). On the other hand, novelty of the invention in B’s Application (B being ‘True and First Inventor’ in real sense) on August 1, 2009 is technically killed by Section 13(1)(b) and should not be able to pass the examination in light of the A’s application as prior art. So on the face of it, both A’s and B’s Applications are defective and none should be able to get the patent. The escape route is B challenging A’s application on the ground and consequently the A’s application is transferred in favour of B as if it is actually made by B on July 1, 2009, then B will be able to proceed with the application without section 13(1)(b) causing any obstacle as B is now granted the priority of July 1, 2009 (and if this is so, India is anything but first-to-file system). This, however, is feasible only if B is able to challenge the A’s application. But unfortunately, the grounds of pre-grant Opposition or post-grant Opposition as provided under section 25 (being exclusive grounds) uses the terminology “wrongfully obtained the invention”, which is not the case here. So B may never be able to file a pre-grant or pot-grant Opposition against A’s application. Grounds of revocation, under section 64(1)(b), however, does allow B to file a petition for revocation as the ground is “that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor” and B can always say that A is not entitled under the Act to apply for the patent.
Thus the issue is whether B should wait for grant of patent for A’s application and then file a rectification or does it have any recourse available under common law to challenge the declaration made by A as false (even though unknowingly) and thus A’s application being void? I am still not able to figure out the solution to this hypothetical situation. Any suggestions and comments are welcome!
